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Making a mark with your MARK

November 25, 2021
Trademark Applications

The journey of launching a business is always about playing your cards right and taking calculated decisions. While the setup list may look as simple on the face of it, the real ordeal lies in the nitty gritty details actually involved in getting a company off the ground. One of the primary steps to commencing a business is to decide upon a trade mark that will attract the target audience of the business, and enable the creation of a distinct and unique identity for itself. It is no secret that word of mouth publicity is the most powerful and advantageous tool for a business. And to leverage this advantage and get word of mouth going, it helps to have a distinctive trademark to spread the word around the target customer base.

This article is intended to provide a few vital pointers every business should keep in mind before finalizing a trade mark.

TYPES OF TRADE MARKS    

  1. Fanciful Trade marks are marks that are terms/words/devices which are coined and do not hold any meaning to the general public. For example, the registered trade mark BATA is imaginative and therefore is instantly distinguishable, thereby enabling consumers to immediately link the mark with the goods or services offered thereunder.
  2. Arbitrary Trade marks are generally unrelated to the nature of goods or services of the business, much like the four colored, square logo belonging to Microsoft, the tech-company providing software solutions amongst other things. Such marks do not actually relate to the products offered by the business.
  3. Suggestive Trade marks merely suggest the nature of goods or service offered thereunder, without explicitly stating the same. ‘NETFLIX’ for example, hints at ‘flicks’, meaning movies that can be streamed on the ‘internet’, but it does not explicitly state the services it offers.
  4. Descriptive Marks explicitly describes the nature of goods or services offered by the owner of such a mark, much like ‘Pizza Hut’ which entirely describes the kind of goods and services a consumer can expect upon visiting one of their stores – namely Pizzas. It is important to note that descriptive marks are usually not granted registration, unless the same can show having acquired distinctiveness/secondary significance on account of extensive usage, promotion and popularity among the consuming public at the time of filing the trade mark application.

Trade marks can be conventionally divided into word marks and device marks. Businesses may also opt for non-conventional trade marks such as shape mark, sound mark, colour mark, motion mark and smell mark, etc.(which have been discussed in a separate series titled “Non-Conventional Trade Marks”).

trademark graph

 

POINTS TO REMEMBER BEFORE FINALIZING YOUR TRADEMARK

  • The Quest of Trademarks: To eliminate possibilities of confusion in the market, and choose a trade mark that is singular, exclusive and capable of distinguishing its source/owner. It is always advisable to conduct a preliminary trade mark search before finally zeroing in on a mark and filing its application. This helps an Applicant to ensure that the proposed trade mark has not been applied for or being used by another entity for the same or different goods and services. This step would also help in obviating any possible objection or opposition by a third party, or even allegations of trademark infringement, that may potentially result in the revocation/abandonment of the Applicant’s proposed mark and make the Applicant liable for damages.
  • ‘Words’ of Caution: While finalizing a trade mark, it is important to keep in mind that there exist certain words/terms which are not entitled to protection under the Indian Trade Marks law. Examples of a few marks that are not eligible to be granted protection include
  • Non-distinctive marks, i.e., marks which are not capable of distinguishing the goods and/or services of one person from another; for example – The mark Simatul was not granted registration owing to the prior existence of the trade mark ‘Cibatul’[1]
  • Marks which give exclusive description/characteristics of the goods or services covered thereunder; for example – the trade mark ‘storage’ for the production of bags would not succeed in securing a registration.
  • Cutomary marks, i.e. any word, acronym, or abbreviation which has become common to the trade, cannot be registered as a trademark; for example – The mark ‘VAC PAC’ was denied registration as the Indian Court observed that the same was merely short for ‘Vaccum Packed’, and was commonly used.[2]
  • Marks which are deceitful in nature, i.e. contain any false or misleading matter; for example – A proprietor selling cosmetic products under the mark ‘LikeMe’ was denied registration as the same misled consumers into believing that it was linked to the prior registered and famous mark ‘Lakme’, also offering cosmetics[3]
  • Marks which are hurtful to religious sentiments; for example, the Indian Supreme Court denied registration for the mark ‘Ramayan’ and opined that taking advantage of the Gods and Goddesses by including their names/photographs is not permissible.[4]
  • Marks which contain scandalous and obscene matter; for example – in the recent past, the logo for the e-commerce website ‘Myntra’ was modified as the same was insulting and offensive to women.[5]
  • Marks which are prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950. for example – the national flag cannot be granted registration as a trade mark.
  • The registration of International Non-Proprietary names (INN) or a mark deceptively similar to an INN is prohibited under the Trade Mark Act, 1999, as per the declaration of the World Health Organization (WHO).
  • Be ‘Class’y: For the purpose of trade mark registration, India being part of the Nice Agreement has adopted and applied the Nice Classification of goods and services. Simply put, it is a list that divides goods and services of different categories into “classes”. While a mandatory step to filing an application for the registration of a trade mark includes the specification of the class of goods and/or services that the Applicant intends to deal in from those outlined in the given class, viz. goods and services for which the mark will be used/has been in use. This enables the Applicant seek appropriate and relevant protection for its trademark, and secures the Applicant’s right to sue infringing third parties.
  • The Games of Domain Names: In a world where a business simply cannot do without an online presence, the importance of acquiring a domain name that incorporates the trade mark of a business, has increased exponentially. Therefore, while finalizing a trade mark, it is also advisable to check for availability of a domain name with that trade mark and subsequently register the same so that it is not subsequently registered by any unrelated third party. In the digital era, a distinct domain name along with a corresponding website also serves to distinguish the business/trade mark of one proprietor from those of others.

The aspects involved in the process of filing an application for the registration of one’s mark are manifold. The above-mentioned steps are a conservative estimate of the basic requirements in this regard, which may be factored in so as to obviate certain complications which may arise out of use/registration of a trade mark in the course of a business.

[1] AIR 1978 Guj 216.

[2] Superon Schweisstechnik India v. Modi Hitech India Ltd./CS (COMM) No.750/2018

[3] 1996 (64) DLT 251.

[4] Lal Babu Priyadarshi vs. Amritpal Singh, Civil Appeal No. 2138 / 2006.

[5] Complaint filed by Naz Foundation

Girishma Sai Chintalacheruvu, Associate at S.S. Rana & Co. has assisted in the research of this article.

For more information please contact us at : info@ssrana.com