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Importance and Challenges of Protecting Pattern Marks- India

April 18, 2022

By Ananyaa Banerjee and Sandhya A. Parimala

Pattern marks are the marks consisting of patterns / designs that are capable of identifying the goods or services as originating from a particular organization/company. Pattern marks help in uniquely identifying a brand due to its eye catching visual, and makes it easy for customers to find the products with the pattern sans the brand name. The use of a registered mark in the pattern may render the said mark distinctive as a whole.

POSITION OF PATTERN TRADE MARKS IN DIFFERENT JURISDICTIONS

POSITION IN THE EUROPEAN UNION

The EU law specifically defines a pattern mark and the same is therefore officially recognized as a trade mark under the EU law. A pattern mark is a trade mark consisting of elements in a regularly repeated pattern.[1]

A pattern mark is required to be represented by way of submitting a reproduction showing the pattern repetition. Further, the Applicant may also file a description detailing the repetition of the pattern in a regular manner.[2]

The reproduction of the pattern mark may be submitted by showing the reproduction in one single .jpeg file or on one single A4 sheet. Further, the description if any, must accord with the representation and not extend its scope, and colour, to the extent that they form an integral part of the description, may be indicated therein.[3]

Some of the examples of pattern marks registered in the EUIPO are: (1) pattern mark registered by Burberry Limited ()[4]; (2) pattern mark registered by S:t Eriks Ögonsjukhus AB ()[5].

POSITION IN THE UNITED STATES

According to the US law, a repeating-pattern mark is a mark which is composed of a single repeated element or a repeated combination of designs, numbers, letters or other characters in a pattern. The said may be on the whole surface of the product or on a portion of the relevant item.

The repetition of the mark’s elements is a property of a repeating-pattern mark that must be adequately defined in the application. The fact that the mark illustrated in the drawing is utilized in a recurring manner on the relevant objects is not a sufficient foundation for treating the mark as a repeating-pattern mark on its own. That is, the applicant may not be seeking a registration in which repetition is a feature of the mark, despite what is represented in the specimen. As a result, there must be some indication in the mark description or on the artwork that the mark is made up of a repeating pattern.[6]

A pattern mark may be inherently distinctive if unique when used in connection with the relevant goods or services. However, since the pattern marks frequently serve the ornamental function when applied for goods/services, they may not be inherently distinctive as the said marks are perceived to be an ornamentation or background matter serving no source-indicating function. Therefore, the determination of the inherent distinctiveness depends upon the impression created when the mark is used in connection with the identified goods or services.[7] In case the consumers do not perceive these patterns as source indicators, the pattern marks may not be registered without proof of acquired distinctiveness.

The following are the relevant considerations when determining inherent distinctiveness of the pattern mark:

  1. If the mark is a common or widely used pattern.[8]
  2. If the pattern creates a distinct commercial impression apart from other matter.[9]
  3. Nature of elements in the repeating pattern.[10]
  4. Industry Practice.[11]
  5. Type of product.[12]

Further, at some instances, pattern marks may serve a functional purpose, i.e a pattern mark could serve a utilitarian function, which is essential to the use of the product or affects the cost or quality of the item, or an aesthetic function, which does not have a truly utilitarian function in terms of the product’s use or performance, but nonetheless provides a real and significant competitive advantage. For example, a camouflage pattern for a product which is required to be concealed or hidden performs a utilitarian function. In such case, the registration of a pattern mark is refused registration.[13]

Some of the examples of pattern marks registered in the USPTO are: (1) the repetitive diamond pattern on the cloth speaker grill of a musical instrument amplifier by Vox Amplification Limited ()[14]; (2) repeating pattern of “AV” on the face of a watch by ABS-SLG, LLC ()[15].

 

POSITION OF PATTERN TRADE MARKS IN INDIA

In India, a pattern mark is not defined under the provisions of the ATrade Marks Act, 1999. However, a pattern may be registered in India, if it satisfied all the necessities of a trade mark as mentioned in Section 2(1)(zb) of the Trade Marks Act, 1999[16]. Therefore, a pattern mark may be registerable in India, if it is (1) capable of graphical representation; (2) capable of distinguishing the goods from one person to the other.

A pattern mark can be represented graphically therefore satisfying the first requirement. Further, a pattern mark should be capable of uniquely identifying the source of a product/service. Therefore, for a pattern mark to be registered, it is required that they are highly distinctive and should be able to create impression in the minds of general public, with respect to their source of origin.

We can see many pattern marks registered with the Indian Trade Marks Registry under the category of “device marks”. Some of the examples of pattern marks registered in India are given below:

Application No. Trade Mark Applicant Application Date Class
861146 Louis Vuitton Malletier June 15, 1999 18
1104552 Burberry Limited May 14, 2002 09
2892932 Burberry Limited January 29, 2015 03, 09, 14, 18, 24, 25

 

Even the judiciary appears to recognize the pattern marks as trade marks and has in fact protected various pattern marks from counterfeiting. In the case of Louis Vuitton Malletier v. Mr. Manoj Khurana & Ors[17], the Hon’ble Delhi High Court held that the trade marks associated with the plaintiff including the LV Logo, the Toile Monogram and the Daimer pattern are well-known throughout the world and, therefore, the Hon’ble Court granted permanent injunction against the defendant for infringing the trade marks of the plaintiff including the Daimer pattern mark.

CHALLENGES FACED IN PROTECTION OF A PATTERN MARK

The main challenges faced by the proprietors of a pattern mark are:

  1. Proving the distinctiveness of a pattern mark: Identifying a product only by of its pattern without the absence of any word element would be little difficult and is a challenge to the proprietor to prove that the public identifies the product only with the pattern by way of inherent or acquired distinctiveness. Proving this in practicality might be difficult. If customers do not perceive the pattern as a trade mark exclusively and independently, it does not qualify as a trade mark. Further, it might be difficult to explain the distinctiveness of the pattern mark during enforcement actions and during the period of oppositions. Moreover, in many situations, a pattern is usually perceived as an ornamentation or background and serves no source indication function.

CONCLUSION

Even though our law does not specifically recognize pattern marks as a category of marks, we can see that the Indian Trade Marks Registry, as well as the Indian judiciary have shown activeness in the registration and protection of a pattern mark. This makes it clear that prosecution and enforcement of such marks is much easier as compared to other non-conventional marks. Increase in the number of flings will give further clarity on the registration process and requirements for registering such kind of marks.

[1] Article 3(3)€ EUTMIR.

[2] https://euipo.europa.eu/tunnel-web/secure/webdav/guest/document_library/contentPdfs/law_and_practice/trade_marks_practice_manual/WP_2_2017/Part-B/04-part_b_examination_section_4_absolute_grounds_for_refusal/part_B_examination_section_4_chapter_2/part_B_examination_section_4_chapter_2_EUTM%20definition_en.pdf

[3] https://guidelines.euipo.europa.eu/1803468/1789576/trade-mark-guidelines/9-5———–9-3-5-pattern-marks

[4] EUTM 017993008

[5] EUTM 005365754

[6] Trademark Manual of Examining Procedure § 1202.19

[7] Trademark Manual of Examining Procedure § 1202.19(e)(i)

[8] Trademark Manual of Examining Procedure § 1202.19(e)(i)(A)

[9] Trademark Manual of Examining Procedure § 1202.19(e)(i)(B)

[10] Trademark Manual of Examining Procedure § 1202.19(e)(i)(C)

[11] Trademark Manual of Examining Procedure § 1202.19(e)(i)(D)

[12] Trademark Manual of Examining Procedure § 1202.19(e)(i)(E)

[13] Trademark Manual of Examining Procedure § 1202.19(i)

[14] Registration No. 3679828

[15] Registration No. 3342382

[16] Section 2(1)(zb), Trade Marks Act, 1999: “trade mark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours;

[17] 2015 SCC OnLine Del 11683

Sandhya A. Parimala, Associate at S.S. Rana & Co. has assisted in the research of this article.

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