The Taj Mahal Palace Hotel recently became the first building to register as a trade mark in India. Other examples of non-traditional trade marks are increasingly being registered in other parts of Asia. We spoke to IP practitioners in India, China and Japan to see what sorts of non-traditional trade mark innovations have emerged in these markets.
Image trade mark
The registration of the Taj Mahal Palace Hotel gives its owners the possibility to prevent commercial uses of the image of the building. “Any misuse of the façade of the building on any object which is being sold for monetary benefit can be challenged by way of an infringement claim,” says Pravin Anand, managing partner at Anand and Anand. If, for example, a travel company uses the façade of the building in its promotional materials, it can be considered infringement. “This registration may open doors for the Indian government to seek trade mark registration for other iconic buildings and earn considerable royalties from exploitation of these buildings by others and at the same time allow the government to regulate the context in which the buildings are used,” says Disha Dewan, patent attorney at RK Dewan. “This is the first successful attempt to register an architectural trade mark by itself in India. Others have applied for and registered various buildings, but always along with a word or a logo and not by itself.”
An image trade mark comes under India’s Trade Marks Act, which states that a trade mark must be capable of being represented graphically and function as a source indicator. “We are not aware of unsuccessful attempts to secure registration for an architectural work, but the Trade Marks Office will review the functionality of the shape of the building, on which basis, a refusal decision may be made,” says Anand. With the change to India’s trade mark rules in March, sound recordings can also be recognised as trade marks. Other examples include 3D, shape and colour marks, and photographs of personalities. The shape mark for the Oscar statuette, Yahoo’s yodel sound mark and Christian Louboutin’s red sole shoe colour mark are just a few examples of successfully registered marks. Single colour marks have been granted if there is a high degree of proof showing acquired distinctiveness, such as the colour brown for Victorinox.
What about in China and Japan?
Nothing similar to the Taj Mahal Palace Hotel has been registered successfully as an image trade mark in China or Japan, but IP practitioners point to non-traditional trade marks case law that is gradually developing in these countries.
3D shapes, colour combination marks and sounds can be registered as trade marks in China. Examples include the sound mark of Nokia’s signature ringtone and the colour combination mark of John Deere’s green and yellow agricultural machinery. “China accepted 3D trade marks and colour combination trade marks from 2001,” says Mingming Yang, partner at Wan Hui Da Intellectual Property Agency. “After the revision of the Trademark Law, which took effect in 2014, the registration of sound marks was possible.” Yang explains that under the PRC’s Anti-Unfair Competition Law, a famous product’s packaging and the colour combination of the product may be protected, as shown in the example of Andreas Stihl’s orange and grey combination in its chainsaws.
“Despite the successful registration of various non-traditional marks and the clarification of filing requirements for sound marks in the latest PRC Trademark Office’s examination guidelines, additional examples of registered non-traditional trade marks would still be required for applicants and practitioners to better understand the relevant examination standards, especially the requirements for distinctiveness,” says Yu Bo, partner at Simone IP Services. For example, the Beijing IP Court is expected to issue its decision in China’s first administrative lawsuit involving the registration of sound marks. Tencent filed the administrative lawsuit against the Trademark Review and Adjudication Board in relation to the company’s application for the “di di di di di di” sound mark, which is used in its QQ instant messaging software and was rejected for registration due to lack of distinctiveness. Yu Bo also feels that the enforcement of sound marks will be the next challenging issue in this area. “One of the challenges is how open-minded we could be in accepting non-traditional trade marks,” says Yang. “Non-traditional marks are naturally different from what people are familiar with but some Chinese judges have the opinion that if people do not recognise such trade marks, they cannot be registered, which is a dilemma.”
According to Mitsuko Miyagawa, partner at TMI Associates, Japanese law does not have a definition of an image trade mark. However, 3D shapes of buildings may be registered as trade marks under the Trademark Act if they have acquired distinctiveness through use. An example of this is the 3D shape of a convenience store with the word mark “Family Mart” and the 3D shape of a building with the word mark “Wynn”.
“Another option may be to protect the shape of a building if it has acquired distinctiveness as a source indicator under the Unfair Competition Prevention Act,” explains Miyagawa. “In the Komeda Coffee Shop v Masaki Coffee decision, the Tokyo District Court found that the shop exterior falls under a well-known indication of goods or services and permitted the plaintiff’s exercise of rights against the respondent’s use of similar exterior design.”
Other examples of non-traditional trade marks that are recognised as registrable trade marks under the Trademark Act are colour, hologram, movement, position and sound marks. “Although the Japan Patent Office has expressed its position that colour marks are generally considered not distinctive, applicants may register them by establishing acquired distinctiveness through use,” says Miyagawa. “An example of an approved registration is the orange-green-red-white colour stripes of 7-Eleven convenience stores. No single colour trade marks have been approved so far.”
Trade mark laws in a number of Asian countries have been updated to include non-traditional trade marks but practitioners are keenly observing case law to develop a better understanding of what can be registered successfully. Competition legislation is also emerging as an avenue for IP practitioners to turn to for protecting the names and designs of famous commodities.