Trademark refers to any mark which is capable of distinguishing the goods and services of one person from another. Traditionally trademarks include marks such as words, letters, symbols, logos, combination of colours, numbers, or any other combinations which can be graphically represented.[1] An unconventional trademark is a mark which possess the qualities of a trademark and help in distinguishing products, but they cannot be graphically represented. These marks include distinctive characteristics such as a colour, smell, shape of goods, sound, and taste.
Taste or Flavours of certain goods can be considered as an unconventional trademark, if consumers are able to associate the taste of that particular product to the brand or the trade.[2] Taste as an unconventional trademark has been recognised in jurisdictions such as European Union, United States of America, United Kingdom and Canada but has still not gained any recognition in India.
STATUS IN VARIOUS JURISDICTIONS
- European Union
The law of the European Union such as the EU Trademark Regulation of 2017, does not specifically mention about taste marks, and neither has there been any registered taste trademarks, but the criteria for recognising taste as a mark was examined in the case of Eli Lily v. OHIM[3], where “strawberry flavour” in a particular medicine was to be registered. It was observed that this particular taste could not be registered as it lacked distinctiveness and did not possess any characteristic which would help in distinguishing the product. It was further observed that the taste played a functional role in enhancing the taste of the medicine, and therefore it could not be registered as a trademark.[4]
In the European Union if a mark is distinctive, not a functional part of the product, and can be represented or described in any form, then it can be registered.[5]
[1] The Trademark Act,1999, S. 2(zb), No. 47, Acts of Parliament, 1999.
[2] WIPO, https://www.wipo.int/wipo_magazine/en/2009/01/article_0003.html (last visited 6
[3] Eli Lily v. OHIM, R 120/2001-2.
[4] Simon Geiregat, Trademark Protection for Smell, Taste and Feels- Critical Analysis of Three Non-Visual Signs in EU, IIC 53, 219–245 (2022).
[5] EU Trademark Regulations, 2017, art. 31.
In the United States of America, the Lanham Act, does not explicitly bar unconventional trademarks, yet there has not been any successful registration of a taste mark[1]. Although, there have been instances where taste as a mark has been rejected. One such instance was observed in the case of NY. Pizzeria, Inc v. Ravinder Syal[2], wherein the registration of taste of pizza was rejected. It was held that in order to be a considered as taste mark, the taste should have acquired a secondary meaning, which implies that the consumer must be able to associate the taste to the brand.
- United Kingdom
Taste as a trademark has been registered in the Benelux Office of Intellectual Property, where the “taste of liquorice” has been registered on the basis of a written description.[3]
- Canada
The Trademark Examination Manual of Canada specifically mentions about taste as a mark. As per the manual, taste of a product can be registered as a mark, but any form of food flavouring cannot be granted taste mark, merely because it imparts taste and plays a functional role.[4] Further, the application for registration should contain a representation or written description of the trademark.[5]
INDIAN PERSPECTIVE
In India, there has been no mention of taste as trademark. The Draft Manuals on Trademark Practice[6] used by the Trademark Registry mentions unconventional marks such as sound, colour, and shape but does not mention anything about the taste of a product. Under the current Trademark regime, it is very difficult to grant a taste trademark, as one of the main criteria for a trademark to be registered in India is that the mark should be graphically represented.[7] Though other countries have accepted a written description, India only accepts graphically representation and there is no way of representing a taste graphically.
[1] Amanda E. Compton, Acquiring a Flavour for Trademarks: There’s No Common Taste in the World, 8 Nw. J. Tech. & Intell. Prop. 340 (2010).
[2]NY. Pizzeria v. Ravinder Syal, 56 F. Supp. 3d 875 (S.D. Tex. 2014).
[3] Mugdha Palsule, Nikita Lakhani, INDIA: CONVENTIONALISATION OF NON-CONVENTIONAL TRADE MARKS, 1 E-JAIRIPA, pp. 67-84 (2020).
[4] Sarah O’Grady, Tasty Trademarks: An Analysis of Canadian Trademark Applications covering Taste, CPST Intellectual Property, (Dec. 15, 2020), https://cpstip.com/taste-trademarks.html.
[5] Trademarks Act, 1985, S. 30(2)(c), 1985 (Canada).
[6]Manual of Trademarks Practice and Procedure, 2017, https://ipindia.gov.in/writereaddata/Portal/IPOGuidelinesManuals/1_32_1_tmr-draft-manual.pdf
[7] Trademark Rules, 2017, Rule 23.
India has several tastes which are distinctive in nature, for example the taste of Maggi masala (Tastemaker by the brand Maggi). It has a distinctive taste and acts an indicator of the source, any person would be able to differentiate the taste of Maggi Masala from other brands, yet they cannot be registered, merely due to the mandatory need to represent a mark graphically. If there was a provision to include a description, then through a written description, the particular taste could have been described. Further, on checking the functionality aspect, the Indian trademark law does not explicitly mention functionality, as a criterion for registration, therefore under the Indian regime, even if a taste is the main functionality of the product, it cannot be explicitly denied.
CONCLUSION
Taste as an unconventional trademark can be registered in the European Union, United States of America, United Kingdom, and Canada, if it is distinctive and has characteristics which can distinguish goods and services of one person from another.
According to the current Indian regime, taste as a mark cannot be protected as there is a mandatory criterion to represent the mark graphically. Considering that functionality of the product has also not been a criterion for registering trademark in India, the only barrier for taste as marks is the graphically representation. In order to protect distinctive tastes like Maggi masala, and other tastes in India, the criteria of representation should not be limited to graphical; but it should also include a written description like other jurisdictions.
Although including a written description is not an effective solution, as describing and interpreting a particular taste is difficult. Therefore, in order to help brands, protect their unique identity, which is the taste of their products, there should be a sui generis method for registering taste as a trademark.
Author – Ketan Joshi
Associates
Co-Author – Jyothsna Nanda Kishore
Intern
