Trademarks play a very important role in any business as they represent and become as the identity of a business. Trademarks are a form of Intellectual Property (IP), which is empowered by The Trade Marks Act, 1999 in India. Section 2 (zb) of the Act defines a “trademark” as 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.
In the Act, section 2 (m) defines a “mark” as a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours. From the above definitions we can understand that the meaning of trademark is really broad in India. It is really important to choose the trademark for your business carefully so that the customers can distinguish your services or goods from others. Distinct trademark not only helps companies to build a strong trademark but also makes the process of trademark registration smooth because there are less objections during the process of registration. Further, a distinct trademark is less likely to get into any legal disputes. Thus, coining the right mark and protecting it in the initial phase helps in multiple ways.
Things that need to be avoided while choosing a trademark
Section 9, ‘absolute grounds for refusal of registration and section 11, relative grounds for refusal of registration’ of the Act need to be kept in mind while choosing a trademark. Some of the important points from these sections are given below.
- The customers should be able to distinguish the trademark. It must not be confused with other trademarks. Here, trademark search becomes very important.
- The trademark should not be describing the product or service. It shouldn’t be descriptive by providing the kind, quality, quantity, intention, values, geographical origin, characteristics of product etc.
- It shouldn’t be misleading the public in any way.
- The trademark should not hurt any religious susceptibilities.
- Shape of the goods should not represent the goods itself.
- Cannot be identical or similar to an earlier trademark or well-known trademark.
Points that help in finding an attractive trademark
- The mark should be comfortable for the public to read, pronounce and remember.
- It is better not to choose words that can be interpreted by different meanings in any language.
- A mark, which is easy to advertise, will help to make an impact in the customers mind.
Types of trademarks:
- Fanciful marks: Inventing fanciful words without any meaning is easy to protect but requires proper advertising for customers to remember. For example, “BATA” for footwear, “GOOGLE” for web services, ZOMATO for food delivery, etc. These words have no meaning or relation with the services or goods they provide.
- Arbitrary Marks: These are the trademarks where the word or words has meaning and which will be in common use but doesn’t have any relation with the product and services provided by the entity. These marks also need proper advertising for the customers to understand the products and services. For example, “SHELL” for petroleum goods, “BLACKBERRY” for telecommunication devices, “APPLE” for personal computers, etc.
- Suggestive Marks: For a suggestive mark, words are chosen without describing the product but provide some resemblance with the product and services. These marks require less advertising because the customers can get a hint from the mark itself but these marks are difficult to get protection. For example, “AIRBUS” for an aircraft manufacturing company, “EATFIT” for healthy food delivering cloud kitchen, etc.
- Descriptive marks: These marks are very weak for getting protected. These marks describe the product but not in direct meaning. The main advantage of having a descriptive mark is that these marks require less advertising, because, the public can easily understand what the product is. Example “PIZZAHUT” for a pizza restaurant, “CARDEKHO” for used and new car sales platform, etc.
- Generic words for trademark: Companies and enterprises cannot use a term that is like “printer” for a printing machine as a mark. A generic word used as a trademark which later on is used to describe the whole product category could lead to a loss of distinctiveness. This is called as genericide. Some examples are of this are “XEROX”, “SUPERGLUE”, “JET SKI”, “BAND-AID”, “ASPIRIN” etc. These products have lost their distinctive identity.
Conclusion
The strongest and easily protectable trademarks are fanciful marks (Ex: Google) and arbitrary marks (Ex: Amazon). These trademarks are distinctive, easy to remember and pronounce, and also makes an impact in the minds of public.
Author: Kailesh Gopi
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