Just the shape or colour of products help us identify the brand, such is the power of non-conventional trade marks. Think of the iconic teardrop shape of Hershey’s Kisses chocolates or the unmistakable Cadbury Blue that immediately tells you it’s a treat from one of the world’s most beloved chocolate makers. Now, adding to this list of iconic trademarks, Lupin Atlantis SA, a Switzerland based pharmaceutical product developer has made its mark by securing a 3D trademark and color mark for their inhaler in Classes 5 and 10. The inhaler features a sleek grey actuator paired with caps in vibrant hues of pink, brown, and olive green.
Article 15, TRIPS Agreement provides for the criteria required for the registration of conventional marks, though even the non- traditional marks (hereinafter referred to as NTMs) have to satisfy certain basic criteria’s such as distinctiveness, graphical representation and visual perception. Non-traditional marks (NTMs), such as Lupin’s 3D and color mark, must also meet essential criteria such as distinctiveness, graphical representation, and visual perception. However, NTM’s face their share of problems when it comes to seeking protection under law and registering the same under the ambit of trademarks. The two pertinent issues would be regarding the functionality test of trademarks and the issue of graphical representation of NTM’s. Understanding whether a mark adds a secondary, distinctive value to a product or simply serves as an alternative to a common feature is crucial. Trademark protection is not available for a mark which is purely functional in nature and the entire concept of functionality is to ensure “that an applicant does not indirectly achieve the status of a patent holder, with an unlimited term of protection, by obtaining a trademark registration. It would be abusive and unfair to the public to allow a person to gain the benefits of a patent by obtaining a trademark registration, especially when a person otherwise could not obtain a patent or when the patent in issue has expired[1]”
The Registrar of Trade Marks in one of the Examination Reports for Lupin’s inhaler had raised objections under Sec 9(1)(a) and Sec 9(1)(b) of the Trade Marks Act, 1999. In reply, the Applicant had relied on the principle of Inherent Distinctiveness and stated that the unique placement of the colors on the inhaler contributes to the overall distinctiveness. The Applicant had further stated that the nature of the trademark is not functional and it does not convey any direct reference to the character and quality of the goods for which the said colour mark is applied.
Lupin’s decision to obtain non- conventional trademark protection for its inhalers has been a strategic move that goes beyond merely marketing. It depicts the pharmaceutical giant’s commitment towards innovation and adopting creative method to stand apart from the rest. The pharmaceutical industry being highly competitive and fast pacing, such a distinctive mark would place Lupin’s inhaler on a separate pedestal for its distinctiveness and also reinforces brand value.
With time, shape and color marks will continue to play a crucial role in defining and differentiating products. Lupin’s innovative approach sets a pattern for how brands can use these non-traditional trademarks to create long-lasting impressions and build stronger influence with consumers.
By
Aarya S Puthran
[1] Lisa P. Lukose, Unconventional Trademarks: Novel Trends in the Modern Trademark Law,4, CNLU Law Journal,23, 22-33 (2010). Stork Market Inc. v. Ontario Inc, 1736735 FC 779 (2017).
