This note is only intended as a general overview and is not to be viewed as a substitute for legal advice. Brands & Bonds shall not be liable for any actions taken or not taken on the basis of this note.
It is to be noted that all ‘marks’ are not ‘trademarks’. A ‘mark’ could be anything, viz a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.
A mark in order to qualify itself to be a trademark has to essentially satisfy the following two conditions.
- Graphical representation: The selected mark should have the ability and capability of being represented graphically. To that extent, sounds can also be graphically represented hence, would qualify to be a trademark. Eg. Yodel of Yahoo was the first sound mark registered in India. However, smell/fragrance marks are yet to be registered as trademarks in India, though the option is provided while filing trademarks online.
- Distinguish: The selected mark should be capable of distinguishing the goods or services of one person from those of others.
Protection of trademark by way of registration has become an inevitable element for any business houses. The brands have a direct nexus and are correlative with the reputation of business houses. Value of the brand appreciates with reputation of the business and vice versa and could even lead to a value beyond the core business.
At most importance should be accorded in selection of a trademark. It should be kept in mind that the spectrum of legal protection is highly dependent on the type of mark selected.
Following five DO NOTs would help the business houses in selecting legally protectable trademark.
- Devoid of any distinctive character: DO NOT select a mark which is not having distinctive character. Eg. Avoid selection of one letter, two letters etc.
- Descriptive: DO NOT select a mark which describes the goods or services, or quality, quantity etc. Eg. Soap, detergent etc.
- Identical/Similar: DO NOT select a mark which is identical or similar with already existing mark. It is always recommended to run a trademark search to identify whether there are any identical or similar marks already existing.
- Customary in the current language: DO NOT select a make which has become associated with a particular category of goods or services Eg. Xerox lost its capacity of trademark since it transpired as a customary language.
- Names: DO NOT select a name of person, place etc. Names can be trademarks however it would require substantive use for being registered as trademark.
It is true that when a new product is launched in the market, a mark that could describe the product needs no further description or marketing and the customers could correlate with the product easily. But, such mark fails to accords bare minimum legal protection. Unfortunately, this happens to be the common mistake of mid and low sized business houses. The entry may be smooth, but soon it may face legal tides.
Following, in their respective order are considered to be legally ideal trademarks.
- Coined Words: These are regarded as the best trademarks. Eg. Nike, Adidas, Lux, Kodak etc. These have no dictionary meaning and are creations of human ingenuity.
- Arbitrary Words: These are words which have a dictionary meaning however, is not related or have relevance to the product or services. Eg. Apple for Computers, Blackberry for mobiles etc.
- Suggestive words: These are words which suggest or leave an impression to the end customers of the product but stops from being descriptive. The best example would be Good Night for mosquito repellents, Sleep well for mattress etc. However, ample care should be taken in choosing suggestive words since the borderline of suggestive words and descriptive words are very thin.
Identifying or creating a new trademark is indeed opening plethora of opportunity. Adequate importance should be accorded to the selection process. It is always recommended to have a legal opinion prior to finalising the trademarks.
Author - Vineed Abraham & Varghese K Paul
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