Written by:- MEDHA R LAXMI, 3rd YEAR STUDENT OF NLU, BHOPAL
According to the Trade Marks Act, 1999 a “trademark” is defined 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 the shape of goods, their packaging and a combination of colours.” Protection under the Trade Marks Act, 1999 allows registration of those marks which are sufficiently ‘distinctive’ in nature. Not all marks can be registered as trademarks. Types of trademarks are discussed below:
1. Generic Marks: A Generic mark is a mark which does not qualify for statutory protection. However, some marks become generic due to their uninterrupted and extensive use over a period of time. In such cases, the product or the service itself comes to be identified with the trademark. A generic mark requires a greater degree of proof to be protected and the burden of proof lies upon the one who claims the distinctiveness of the generic mark to be much higher. For example, in the case of E. Griffiths Hughes Ltd. v. Vick Chemical Co., AIR 1959 Cal 654, the Court held that “VapoRub” was not an invented or a coined word however, it was allowed to be registered upon production of evidence of acquired distinctiveness. It was held that the mark “VapoRub” of Vicks Chemical Company had been in use, continuously in India much before the date of application for its registration and therefore had acquired sufficient distinctiveness making it fit to be registered as a Trademark
2. Descriptive Marks: Descriptive marks are marks which describe a characteristic(s) of the goods/services in question. The descriptive element may be a quality, quantity, kind, etc. of the product or service. However, if these marks manage to achieve a secondary meaning, then they can qualify for protection. For example, use of terms such as ‘Cold and Creamy’ for ice cream.
3. Suggestive Marks: Suggestive marks are merely suggestive of the purpose of the goods/services covered under the trademark. Such marks require the imagination of the consumer to establish a relation between the mark and the goods/services it covers.For example, Microsoft, Netflix, etc.
4. Arbitrary Marks: Arbitrary marks are commonly used words or words which have no dictionary meaning and have no relation to products or the services they are applied to. These qualify for a stronger protection than others. For example, Chicago for Pizza or Starbucks for Coffee or even for that matter, Apple being an arbitrary mark for it being used as a brand name for the technological giant.
5. Fanciful Marks: Fanciful marks are invented for the sole purpose being used and registered as trademarks as they have no other meaning. Since they are inherently distinctive and unique, they enjoy the widest scope of protection. For example, Kodak, Pepsi.
1. Service Marks: A service mark is a type of a trademark. However, it is important to understand that, Service marks represent the services offered by the company instead of a product or a good. A service mark distinguishes the services of one service provider from that of another. These are usually filed by large business chains. For example, Agarwal Packers and Movers for representing packers and mover’s services, McDonalds, Wal-Mart, etc.
2. Collective Marks: When a mark is said to be used collectively by a group, institution or an association of persons, it is said to be a collective mark. The examination of a collective mark is quite similar to that of a trademark with regard to its originality, deceptive similarity and the confusion which might be faced by ordinary public. For example, the mark “CA” is used by the members who are a part of the Institute of Charted Accountants, or the mark “CPA” which is used to denote the members of the Society of Certified Public Accountants.
3. Certification Marks: These marks define the standards of the goods/services with respect to origin, quality, material, genuineness etc. They guarantee that the product/service meets safety and other such prescribed standards of the consumers. The certification mark is usually embodied upon the product. Presence of a certification mark upon a product indicates that, the product has gone through the specified standard tests. The requirements for filing a certification mark are elaborate and exhaustive as compared to a trademark. For example, the ISI mark.
4. Shape Marks: A trademark may also include the shape of goods or any particular packaging of such goods if any, according to the Indian Trade Marks Act, 1999, as long as it is possible to graphically represent the shape clearly. Shape marks help in distinguishing the products sold under such marks from those of another manufacturer. For example, the shape of Zippo lighters.
5. Pattern Marks: These consist of specifically designed patterns which act as a distinguishing factor of the product and are capable of identifying the goods or services from any particular manufacturer/proprietor. It is important to understand that, Patterns which fail to stand out as remarkable or distinct are generally rejected since they do not serve any purpose. However, in cases where the pattern mark has become considerably recognised in the minds of the public, it acquires ‘distinctiveness’ and therefore qualifies for registration. For example, the ‘LV’ pattern of the brand Louis Vuitton affixed upon their products.
6. Sound Marks: When a particular sound identifies any product or a service uniquely, it is to be understood as a sound mark. A sound mark refers to a certain sound which is associated with a company or its product or services, thus enabling the general public to identify the same from other manufacturer. It is technically referred to as an ‘audio mnemonic’, which is an important tool used for branding. It may be a short distinctive sound which is positioned at the beginning or at the end of a commercial for a product or a service. Therefore, in such cases, this sound may be regarded as a trademark eligible for registration as per the Trade Marks Act, 1999. In order to register a sound mark the sound has to be represented graphically along with submitting the tune in the required format with the Trade Marks Registry. For example, the Metro Goldwyn Mayer (MGM’s) lion roar, or the “Ting, Ting Ting Ta- Ding” of IBM (did you sing it too?).