Tactile Marks: Can We Protect The Sense Of Touch?

Probably one of the first texture marks to be registered occurred in 2004 when the Ecuadorian Institute of Intellectual Property granted Diageo, a well-known beverage and alcohol manufacturer, exclusive rights to the cracked glass texture on the surface of its Old Parr Scotch whisky bottle.

The Ecuador trademark office agreed to register the texture of the bottle by itself, without regard to the bottle design, based on “the [texture] mark's distinctiveness, graphic representation and its ability to be experienced by the sense of touch.” To meet the requirement that the crackle-glass texture mark be represented by touch in the Ecuadorian IP Gazette, Paz Horowitz reproduced the mark on the printed page “by a dual-printing process in which the inked portion was printed first, followed by a second raised impression or embossed printing of the texture mark itself on the same page.” The result was a picture of the mark (shown below) with the raised portion clearly “felt” as a raised honeycomb design.

The crackle-glass texture mark was registered April 27, 2004 (Ecuador Reg. No. 29597-04).^[1]

Tactile marks were first acknowledged in 2006 when International Trade Mark Association (INTA) passed a resolution in favour of them.^[2] The same year, the World Intellectual Property Association (WIPO) issued a report on the new types of marks, listing 'texture or feel marks' as non-visible marks. The report highlighted that the surface of a product could lead to recognition due to a specific and recognizable structure or texture.^[3]

Tactile marks could include, for example, the distinctive texture of a luxury handbag, the embossed pattern on a pharmaceutical tablet, or the unique feel of a beverage bottle. The key requirement for tactile trademarks, similar to other forms of trademarks, is distinctiveness. The texture must be distinctive enough that consumers associate it with a particular source or brand without confusion.

Position of Tactile Marks in Different Jurisdictions:

• Position in Germany

This new category of trade marks was first recognized in the Trade Marks Registry of the German Patent and Trade Mark Office in 2003, based on a 2002 application submitted by Underberg AG for several goods in Class 32 and 33. The trade mark displays the term “UNDERBERG” in braille as follows:

• Position in European Union:

Earlier in the European Union, as per Article 4 of Regulation 207/2009, it was pertinent for a mark to be represented graphically in order to be eligible for protection. However, the current regulation has abandoned the requirement of a mark being graphically represented and requires a mark to be capable of being represented in a manner which enables the authorities and public to determine the clear and concise subject matter of the protection (Article 4 of the 2017/1001 Regulation). Despite the reform, tactile marks still face hurdles due to the lack of technology that can adequately convey tactile sensations in registrable format.^[4]

In the case of Neoperl AG v European Union Intellectual Property Office (EUIPO)^[5], the General Court held that the tactile impression () was not clearly apparent from the graphic representation itself but at most, from the description. The judgment applies to the previous EU trademark regulations but can be relevant under current legislation. It emphasizes that the sign itself must clearly identify what is being protected, and any description should not expand its scope (Art. 3(2) of Regulation 2018/626)^[6]. The representation of the sign must be clear, precise, self-contained, easily accessible, intelligible, durable, and objective, using available technology (Art. 3(1) of Regulation 2018/626).

Current technology does not allow for the replication of tactile sensations of objects. However, this could change with advancements in virtual reality gloves and suits becoming more widespread. Until such technology evolves, it is unlikely that tactile trademarks can be registered in the European Union.

• Position in the United States of America

In contrast to EU law before its recent reform in 2017, U.S. law does not require trade marks to be represented graphically for federal registration. The Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trademark Office (USPTO) recognized in 1978 that flexibility is crucial to accommodate technological advancements, allowing marks not confined to graphic forms.

The Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trademark Office (USPTO) recognized in 1978 that flexibility is crucial to accommodate technological advancements allowing marks not confined to graphic forms. The acceptance of non-traditional marks for registration progressed notably after a 1995 United States Supreme Court ruling in Qualitex Co. v Jacobson Products Co.^[7] emphasized that a mark's ability to distinguish its source, rather than its form, qualifies it as a trade mark. The Supreme Court clarified that the language of the Trademark Act of 1946 is broad in scope, allowing for a diverse range of trademarks beyond traditional graphic representations. To accommodate non-visual marks, the USPTO introduced a classification known as "mark drawing code 6" for sounds, scents, and other non-visual marks.^[8] This code is specifically designated for sounds, scents, and other non-visual identifiers, reflecting the agency's commitment to adapting trademark law to encompass innovative branding strategies.^[9]

The Trademark Trial notably recognized this principle and Appeal Board (TTAB) of the United States Patent and Trademark Office (USPTO) in re General Electric Broadcasting Company Inc.^[10] in 1978, emphasizing that flexibility is essential to accommodate ongoing technological advancements and the evolving nature of branding.

The USPTO received an application for the registration of texture of the leather wrapped around a wine bottle on March 23, 2005. The mark applied for was represented in the following manner:

The USPTO approved the registration of a leather-textured wrap ( ) around the center of a wine bottle as a tactile mark vide Registration No. 3155702 in Class 33 for wines in the name of David Family Group LLC on October 17, 2006. However, it's important to note that the registration for the leather texture on wine bottles was later cancelled because the registrant failed to file an acceptable declaration under Section 8^[11] of the Trademark Act.

The USPTO has also given protection to raised texture designs on goods in a number of other instances. However, if a tactile mark's description cannot be inferred from writing, registration may be denied.

Other examples include:

KimberlyClark has a federal trademark for the configuration of its facial tissue container and received USPTO approval for an intent-to-use application for the raised, alternating dot pattern on its paper towels. It was applied on May 14, 2005 and was granted registration on March 11, 2023.

Description: The mark consists of the three-dimensional configuration of packaging for facial tissue that is made of a flexible material that is folded in the closed position, and in the open position reveals two pockets with openings that face toward the center on each side from which tissues can be dispensed. In the closed position, the packaging is rectangular in shape with rounded edges and a smooth spine where the packaging folds. In the open position, the packaging is rectangular in shape, and there is a half oval cut out on each pocket that creates a combined appearance of a circle centered over the internal fold line of the packaging. The broken lines are not part of the mark and serve only to indicate the placement of the facial tissues in the container.

Fresh Inc. holds a trademark for the "cotton-textured paper" wrapping its soap products. Fresh Inc, holds a trademark registration (US, Ser. No, 2,882,410) for a cotton-textured paper wrapped around an oval-shaped soap. The paper is tied with a silver-colored wire that is coiled and fastened to a semi-precious stone bead. This registration covers the tactile element of the cotton-textured paper in international class 03 for skin soaps.

While these examples illustrate that it is possible to successfully register tactile marks in the U.S., the registration process remains challenging. Strict requirements regarding distinctiveness and non-functionality make it difficult to obtain protection for tactile elements. As the legal landscape continues to evolve, we may see more brands exploring the potential of tactile branding in the future.

Position in India:

In the Indian context, the legal position regarding tactile marks was first discussed in Louis Vuitton v Malik^[12]. Louis Vuitton initiated a suit for infringement of its “EPI STYLE” trademark and surface pattern before the Delhi High Court. The EPI STYLE is the unique pattern of the leather's grain on its handbags. An ex-parte temporary injunction was granted in favour of Louis Vuitton by the court, who acknowledged the brand's lengthy and widespread use of the EPI pattern since the mid- 1980s.

As per Trade Mark Act, 1999 the touch mark should meet the specifications of a normal trade mark rather than just being a decoration or packaging for a good or a service. The products' functioning should not be indicated by the touch mark. It must be able to be represented graphically and should lead the customer to identify the mark with the good or service. Since it is highly difficult to graphically portray the feel of the product's texture, touch mark claims for the protection under trademark law are rare when compared to other non-conventional trademarks, especially in India.

India is still in its early stages of recognizing and protecting tactile marks, which presents both opportunities and considerable obstacles. Registration and enforcement for tactile trademarks are unexpected due to the lack of clear legal precedents and rules. The Indian Trade Mark Office urgently needs to provide more precise guidelines and regulations in order to go forward with the explicit incorporation of tactile marks into the framework of registrable trademarks.

It is also critical to educate customers and businesses on the benefits and uses of tactile marks. Encouraging innovation in product design as well as improving brand identity are two benefits of effective mark protection.

Authors: Vikrant Rana (Managing Partner), Titiksha Sinha (Senior Associate), Asmita Kaur (Associate) At S.S. Rana & Co. Views are personal.

1. https://www.worldtrademarkreview.com/article/iepi-accepts-first-registration-of-texture-mark ↑

2. Recognition, Protection and Registration of Non-Traditional Marks ↑

3. New Types of Marks ↑

4. REGULATION (EU) 2017/ 1001 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL ↑

5. https://eur-lex.europa.eu/legal-content/EN/TXT/?uri=CELEX%3A62021TJ0487 ↑

6. Implementing regulation - 2018/626 - EN - EUR-Lex ↑

7. Qualitex Co. v Jacobson Products Co 514 U.S. 159 (1995) ↑

8. https://www.jetir.org/papers/JETIR2108372.pdf ↑

9. ↑

10. re General Electric Broadcasting Company Inc. 199 U.S.P.Q. (BNA) 56 ↑

11. Section 8 of the Trade Marks Act requires the Registrant to declare the use or non-use of the registered mark. ↑

12. Louis Vuitton v Malik (CS (OS) 1825/2003) ↑