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Tag: Non Traditional Trademarks

  • Non-Conventional Trademarks and Their Registration

    In today’s highly competitive business environment, trademarks have evolved far beyond traditional word and logo marks. Modern brands are increasingly leveraging distinctive sounds, colors, shapes, motions, smells, and even textures to create a unique identity and deepen consumer engagement. These non-conventional trademarks are emerging as powerful tools for brand differentiation, enabling companies to communicate their values and personality in ways that transcend conventional visual branding.

    Globally, intellectual property frameworks have adapted to recognize and protect these innovative forms of branding. Organizations such as the World Intellectual Property Organization (WIPO) and its Standing Committee on Trademarks, Industrial Designs, and Geographical Indications (SCT) have acknowledged the significance of non-traditional trademarks and the need for their legal protection. By protecting these unconventional brand assets, companies can enhance consumer recognition and loyalty while safeguarding their market reputation from imitators.

    While jurisdictions like the United States and the European Union have developed more comprehensive procedures and legal frameworks for non-traditional trademarks, India’s legal landscape remains in a relatively nascent stage. The country has taken initial steps to accommodate these innovative trademarks, particularly sound and shape marks, but the legal and administrative processes remain complex and underdeveloped. Nonetheless, recent landmark registrations and judicial pronouncements indicate a growing recognition of the importance of non-conventional trademarks in India.

    Types of Non-Conventional Trademarks

    Non-conventional trademarks are marks that extend beyond the traditional textual or visual logo marks. Some common types include:

    TYPE OF TRADEMARKEXAMPLE
    Motion MarksNokia’s “Hands Connecting” Motion Mark
    Sound MarksNetflix’s “Ta-Da” Notification Sound
    Smell MarksSumitomo Rubber Industries’ “Rose-Scented” Tyres
    Colour MarksCadbury’s Purple Colour Packaging
    Shape MarksCoca-Cola’s Contoured Bottle Shape

    These marks are often highly distinctive and capable of signaling the source of goods or services without relying on traditional textual or logo representations. Their adoption by leading global brands highlights their commercial and strategic value. For example, Nokia’s motion mark and Netflix’s introduction sound have become instantly recognizable to consumers, creating strong brand associations that go beyond conventional logos. Similarly, Sumitomo Rubber Industries’ olfactory (smell) mark for tyres represents a breakthrough in sensory branding, demonstrating the potential for trademarks to engage multiple senses.

    Registration Process for Non-Conventional Trademark in India

    Registering a non-conventional trademark in India is a detailed process requiring careful preparation, given the novelty and complexity of such marks. The process typically involves the following steps:

    1. Conduct a Trademark Search: Before applying, it is essential to conduct a comprehensive search to ensure that the proposed mark does not conflict with any existing registrations. For non-conventional trademarks, this search can be particularly challenging, as traditional trademark search methods primarily focus on word and logo marks. A thorough search can prevent future disputes and objections, saving time and resources.
    2. Filing the Trademark Application: Once a clear search confirms the uniqueness of the mark, the application must be submitted to the Controller General of Patents, Designs, and Trademarks. The application should include detailed descriptions of the trademark, along with graphical, scientific, or technical representations, where applicable, to accurately convey the mark. Non-conventional trademarks often require specialized documentation, such as audio files for sound marks, 3D models for shape marks, or chemical descriptions for smell marks.
    3. Examination Process: The trademark office examines the application to determine whether the mark meets the statutory requirements, including distinctiveness and non-deceptiveness. For unconventional trademarks, examiners carefully evaluate whether the mark can clearly distinguish the applicant’s goods or services from those of others and whether it can be represented in a manner that is intelligible, durable, and objective.
    4. Publication in the Trademark Journal: If the application meets the examination requirements, it is published in the Trademark Journal to invite opposition. Third parties can file objections within a stipulated period if they believe the mark conflicts with their rights. This stage is particularly critical for non-conventional trademarks, as objections often arise regarding graphical representation or distinctiveness.
    5. Registration and Certification: If no opposition is filed or any opposition is successfully resolved, the trademark is registered, and the applicant receives a certificate of registration. The registered non-conventional trademark then enjoys the same legal protection as traditional trademarks under the Trade Marks Act, 1999, including the right to prevent unauthorized use and to seek damages for infringement.

    Notable Examples of Non-Conventional Trademarks

    Several prominent non-conventional trademarks have successfully been registered in India, reflecting the growing acceptance of innovative branding:

    • Nokia’s “Hands Connecting” Motion Mark – Application No. 2008135, Trade Marks Act, 1999.
    • Sound of Human Yodelling “YAHOO!” – Application No. 1270406, registered in 2008.
    • Cadbury’s Purple Packaging – Société des Produits Nestlé SA v. Cadbury UK Ltd [2017] EWCA Civ 358.
    • Sumitomo Rubber Industries’ Rose-Scented Tyres – Application No. TMR/DEL/SCH/2025/16.

    These examples illustrate the diversity of non-conventional marks and the innovative strategies employed by companies to strengthen brand identity.

    Challenges in Registering Non-Convention Trademarks in India

    Despite the potential benefits, registering non-conventional trademarks in India involves unique challenges:

    1. Trademark Search: Due to the unconventional nature of these marks, conducting an exhaustive search to detect conflicts is more complicated than for standard word or logo marks.
    2. Graphical Representation: One of the most critical hurdles is providing a precise and objective representation of the mark. This is especially challenging for sensory marks such as scents or textures. Recent registrations, like Sumitomo Rubber’s rose-scented tyres, illustrate how scientific graphical representation can meet these requirements.
    3. Establishing Uniqueness: The applicant must demonstrate that the mark is distinctive and capable of identifying the source of goods or services. Arbitrary or non-functional characteristics often strengthen the argument for distinctiveness.
    4. Demonstrating Consumer Recognition: It is necessary to show that the mark can effectively distinguish the goods or services of one entity from those of others, particularly in competitive markets.

    Conclusion

    Non-conventional trademarks are transforming the way businesses build and protect their brand identities. From motion and sound marks to scents, colours, and shapes, these marks enable companies to engage consumers in novel ways and create lasting impressions. While India’s legal framework for non-traditional trademarks is still evolving, recent registrations and landmark cases indicate a growing recognition of their significance.

    The registration process, though challenging, can be navigated effectively with the right guidance. Companies must focus on distinctiveness, graphical representation, and thorough legal compliance to ensure robust protection.

    Service providers like TMWala play a pivotal role in helping businesses secure, monitor, and enforce non-conventional trademarks in India and internationally. By leveraging their expertise, companies can maximize the commercial value of their innovative brand assets while safeguarding them against infringement.

    FAQs

    1. What are non-conventional trademarks?
      Trademarks that go beyond words or logos, such as sounds, colours, shapes, motions, smells, or textures.
    2. Why are non-conventional trademarks important?
      They help brands stand out, create unique identities, and strengthen consumer recognition.
    3. Can non-conventional trademarks be registered in India?
      Yes, India allows registration of marks like sound, shape, color, motion, and smell marks.
    4. What is an example of a sound trademark?
      Netflix’s “Ta-Da” notification sound.
    5. What is a key challenge in registering these trademarks?
      Providing clear and objective representation, especially for scents or textures.
    6. What is the first step in registration?
      Conduct a thorough trademark search to ensure the mark is unique.
    7. What documents are needed for filing?
      Audio files, 3D models, chemical descriptions, or technical representations, depending on the mark type.
    8. How is the trademark examined?
      The office checks distinctiveness, non-deceptiveness, and the mark’s ability to identify goods or services.
    9. Can third parties oppose registration?
      Yes, after publication in the Trademark Journal, objections can be filed.
    10. Do registered non-conventional trademarks have legal protection?
      Yes, they enjoy the same rights as traditional trademarks under the Trademarks Act, 1999.

  • Shaping The Future of IP Law in India: A Review of Significant Judgement of 2025

    1. Phonetic Similarity

    Pepsico, Inc. v. Jagdamba Foods Pvt.Ltd.IPDATM/210/2023 (popularly known as Lay’s vs Jay’s case)

    PepsiCo Inc., formed in 1965 through the merger of Frito-Lay Inc. and the Pepsi-Cola Company, traces the Lay’s brand to Herman W. Lay’s potato chip business, begun in 1938. In the context of Indian IP Law, Lay’s has been used continuously for over 75 years and has been registered in India since 31 July 1992, acquiring substantial goodwill and recognition as a well-known trademark.

    PepsiCo challenged the respondent’s mark “Jay’s”, alleging bad-faith adoption and deceptive phonetic similarity to “Lay’s”, used for identical goods and likely to cause consumer confusion while unfairly exploiting Lay’s reputation.

    The petition was filed under Sections 47, 57, 9(2)(a), and 11 of the Trade Marks Act, 1999, and relied on precedents such as Dabur India Ltd. v. Usha (2024) and K.R. Chinna Krishna Chettiar v. Shri Ambal& Co. (1969), emphasizing prior user rights and phonetic similarity.

    The Calcutta High Court, led by Justice Ravi Krishan Kapur, allowed the petition and ordered cancellation of the “Jay’s” trademark, holding it to be deceptively and phonetically similar to the well-known Lay’s mark and adopted with mala fide intent to capitalize on PepsiCo’s goodwill.

    2. Visual Similarity

    Lifestyle Equities CV &Anr. v. Amazon Technologies, RFA(OS)(COMM) 11/2025 & APPL. 26455/2025

    The Delhi High Court imposed a fine of ₹339.25 crore on Amazon and its affiliates for trademark and copyright infringement involving the Beverly Hills Polo Club (BHPC) logo. The Court found that Amazon, through its private label “Symbol”, sold clothing featuring a horse logo that closely resembled the BHPC emblem, creating the impression that consumers were purchasing authentic BHPC products at lower prices.

    The plaintiffs, Lifestyle Equities C.V. (LECV) and Lifestyle Licensing B.V. (LLBV), owners and licensees of the BHPC trademark, alleged that Amazon Technologies Inc., Cloudtail India Pvt. Ltd., and Amazon Seller Services Pvt. Ltd. had used their registered mark without authorization, causing consumer confusion, dilution of the brand’s goodwill, and financial loss.

    The Court observed that Amazon exercised significant control over Cloudtail’s branding and sales, making it accountable for the infringement. The company’s failure to contest the proceedings was interpreted as an acknowledgment of liability. Highlighting the difficulties of enforcing IP rights against e-commerce intermediaries, the Court held the defendants liable under Section 135 of the Trade Marks Act, 1999.

    The Court awarded the plaintiffs a total of ₹339,25,97,966.60, covering damages for lost sales, royalties, and legal expenses, and disposed of all pending applications. This ruling sends a clear message that e-commerce platforms must adhere strictly to intellectual property laws.

    For businesses navigating complex IP issues, service providers like TMWala can be invaluable. TMWala assists companies in securing trademark registrations, monitoring potential infringements, and enforcing IP rights effectively, ensuring that brands are protected from unauthorized use on e-commerce platforms and beyond.

    3. Registration of Smell Trademark

    Sumitomo Rubber Industries Ltd. NO. TMR/DEL/SCH/2025/16

    In a landmark decision for non-traditional trademarks in India, the Trade Marks Registry accepted Sumitomo Rubber Industries Ltd. (a Japanese company)’s application to register an olfactory (smell) mark for tyres. The mark, described as “floral fragrance/smell reminiscent of roses as applied to tyres” (Application No. 5860303, Class 12), has been accepted and advertised in Trade Marks Journal No. 2236 (Nov 2024–2025).

    Filed on 23 March 2023, the application initially faced objections under Section 9(1)(a) (lack of distinctiveness) and Section 2(1)(zb) (absence of graphical representation). To address these, the applicant relied on prior UK registration, decades of commercial use since 1995, international precedents, and a novel scientific graphical representation, a seven-dimensional vector of the scent prepared by a researcher at IIIT Allahabad.

    On 21 November 2025, the Controller General accepted the mark as an olfactory trademark, finding that the scientific representation met the statutory criteria of being clear, precise, self-contained, intelligible, durable, and objective, and directed its advertisement under Section 20 of the Trade Marks Act, 1999. The Registry also noted that a rose scent is arbitrary to tyres and capable of distinguishing the applicant’s products in the market.

    This ruling represents a major advancement in Indian trademark law, recognizing scientifically validated graphical representations as a valid method for protecting non-conventional sensory marks.

    4. Well-Known Mark

    Hermès International &Anr. v. Macky Lifestyle Private Limited &Anr. CS(COMM) 716/2021

    On 24 November 2025, the Delhi High Court delivered a landmark ruling enhancing protection for luxury brands and non-traditional trademarks in India. The Court recognized the three-dimensional shape of the Birkin bag, the “Hermès” word mark, and its stylized logos as well-known trademarks under the Trade Marks Act, 1999, bringing Indian jurisprudence closer to global intellectual property standards.

    Hermès, the French luxury house established in 1837, alleged that the defendants had unauthorizedly manufactured, advertised, and sold products deceptively similar to the iconic Birkin bag, constituting trademark infringement, passing off, dilution, and misappropriation of goodwill. During proceedings, the defendants admitted that they had not manufactured or sold any infringing products, earned no revenue, and that the images shown were only downloaded from the internet. The plaintiffs accepted these statements, resulting in the grant of injunctions.

    Hermès also sought recognition of its marks as well-known trademarks. After reviewing decades of consistent global use, promotion, enforcement history, and cross-border reputation, the Court concluded that the Hermès marks enjoy widespread recognition extending beyond territorial boundaries. Accordingly, it declared the Birkin bag’s shape, the Hermès word mark, and associated logos as well-known trademarks under Section 2(1)(zg).

    This judgment has far-reaching implications, reinforcing protection for product shape marks, acknowledging global brand reputation even with limited local sales, and deterring misuse of luxury branding at any stage. It also strengthens India’s commitment to enforcing international IP rights.

    For businesses, service providers like TMWala play a crucial role in safeguarding brand assets. They assist in obtaining well-known trademark status, monitoring unauthorized use, enforcing IP rights, and ensuring that both traditional and non-traditional trademarks, including three-dimensional shapes and stylized logos, are fully protected in India and globally.

    | Read the whole article regarding Hermès, marked as the well-known trademark

    5. AI vs Copyright

    ANI Media Pvt Ltd Vs Open Ai Inc & Anr CS(COMM) 1028/2024

    In November 2024, Asian News International (ANI) filed a copyright infringement suit against OpenAI in the Delhi High Court, alleging that ChatGPT reproduced or closely mirrored ANI’s news articles without permission. ANI claimed its content was used to train the AI model for commercial purposes and that ChatGPT’s outputs lacked the creativity required to be considered original under Indian copyright law. OpenAI denied infringement, arguing that the training process is statistical, non-expressive, and that any similarity is coincidental. OpenAI also challenged the jurisdiction of Indian courts, citing no physical presence in India.

    The case raises important questions about AI and copyright, including whether copyrighted material can be used to train large language models, whether AI-generated content can be considered original, and whether Indian courts can assert jurisdiction over foreign AI companies. ANI relied on Sections 13, 14, 51, and 52 of the Copyright Act, 1957, as well as the Modak doctrine, emphasizing that the AI outputs are derivative and infringing.

    This dispute is a landmark in India, as it could shape future regulations on AI, copyright protection, and digital content.

    For businesses and content creators, TMWala can help navigate such challenges by securing copyright registrations, monitoring unauthorized use of content, and providing guidance on licensing agreements. TMWala also assists companies in understanding emerging legal risks from AI and digital technologies, ensuring compliance with Indian copyright and intellectual property laws.

    | To know more about this, explore this article: AI and Copyright: The Ani vs. OpenAI Case

    FAQs

    1. What was the outcome of the Lay’s vs Jay’s trademark case?
      The Calcutta High Court cancelled the “Jay’s” trademark, ruling it phonetically and deceptively similar to Lay’s and adopted in bad faith.
    2. Why was Amazon fined ₹339.25 crore in the BHPC case?
      Amazon and its affiliates sold clothing with a logo deceptively similar to the Beverly Hills Polo Club (BHPC) emblem, misleading consumers and infringing on trademark and copyright.
    3. How can businesses prevent e-commerce trademark infringement?
      Service providers like TMWala help secure registrations, monitor potential infringements, and enforce IP rights on online platforms.
    4. What is the significance of the Sumitomo smell trademark?
      The Trade Marks Registry accepted an olfactory mark for tyres, recognizing a scientific seven-dimensional graphical representation as a valid non-traditional trademark.
    5. What are non-traditional trademarks?           
      These include sensory marks, product shapes, colors, sounds, or other distinctive elements beyond words or logos.
    6. How did the Hermès case strengthen luxury brand protection?
      The Delhi High Court declared the Birkin bag shape, Hermès word mark, and logos as well-known trademarks, protecting them against misuse even with minimal local sales.
    7. Can foreign companies like OpenAI be sued in India for copyright infringement?
      Yes, under Section 20 of the Civil Procedure Code, if the company causes harm in India, Indian courts may assert jurisdiction.
    8. What is the legal concern in the ANI vs OpenAI case?
      It questions whether AI training on copyrighted content constitutes infringement, whether AI outputs are “original,” and whether Indian copyright law applies to AI-generated content.
    9. How does TMWala assist with AI-related copyright issues?
      TMWala helps secure copyright registrations, monitor unauthorized use, draft licensing agreements, and ensure compliance with emerging AI and IP laws.
    10. What is the overall trend in the 2025 Indian IP law?
      The year highlights stronger protection for phonetic, visual, non-traditional, well-known, and AI-related intellectual property, aligning India with global IP standards.