Non Conventional Marks in Practice

In one line

The Act lets a shape, a packaging or a combination of colours be a mark, and rule 26 says how each is drawn, photographed or recorded, which is where the graphical representation requirement bites.

The statutory gate

Section 2(1)(zb) requires a trade mark to be "CAPABLE OF BEING REPRESENTED GRAPHICALLY" and "CAPABLE OF DISTINGUISHING".

Section 2(1)(m) includes in "mark" a device, brand, heading, label, ticket, name, signature, word, letter, numeral, SHAPE OF GOODS, PACKAGING or COMBINATION OF COLOURS or any combination of them.

And section 9(3) is the absolute bar for shapes: a mark shall not be registered if it consists exclusively of the shape resulting from the nature of the goods, the shape necessary to obtain a technical result, or the shape giving substantial value to the goods. It carries no proviso, so use cannot cure it.

The graphical representation requirement is what decides most non conventional applications. A smell, a taste and a texture fail at that gate; a sound passes it because notations can be written.

Rule 26 of the Trade Marks Rules 2017

26(1). Every application, and every additional copy required, "shall contain a CLEAR AND LEGIBLE REPRESENTATION of the trademark of SIZE NOT EXCEEDING 8 CM X 8 CM."

26(2), COLOUR. "Where an application contains a statement to the effect that the applicant WISHES TO CLAIM COMBINATION OF COLOURS AS A DISTINCTIVE FEATURE of the trademark, the application shall be accompanied with REPRODUCTION OF THE TRADEMARK IN THAT COMBINATION OF COLOURS."

26(3), THREE DIMENSIONAL MARKS. Where the application states that the mark is three dimensional, the reproduction "shall consist of a TWO DIMENSIONAL GRAPHIC OR PHOTOGRAPHIC REPRODUCTION" as follows:

• (i) the reproduction furnished shall consist of THREE DIFFERENT VIEWS of the trademark;
• (ii) where the Registrar considers that the reproduction does not sufficiently show the particulars, he may call upon the applicant to furnish WITHIN TWO MONTHS UP TO FIVE FURTHER DIFFERENT VIEWS and a DESCRIPTION BY WORDS;
• (iii) where he considers those still insufficient, he may call upon the applicant to FURNISH A SPECIMEN of the trademark.

26(4), SHAPE OF GOODS OR PACKAGING.

• (i) the reproduction "shall consist of AT LEAST FIVE DIFFERENT VIEWS of the trademark AND A DESCRIPTION BY WORD";
• (ii) if those are insufficient, the Registrar may call upon the applicant to furnish A SPECIMEN OF THE GOODS OR PACKAGING.

26(5), SOUND. "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."