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How to register right trademark

Vivek Somani
23rd Feb 2016
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Right trademark

As most of you are aware, trademark is an inseparable intellectual property associated with any business. It identifies your business and differentiates you from the others, provides you a space in clustered market.

Apart from understanding what a trademark is, it is important to know how to select a right trademark for your venture.

Trademark is the most valuable asset as it is directly associated with trade and business and reflects its identity in masses. Hence it becomes necessary to select a right trademark as it is a first step of brand building.

trademark

Image: shutterstock

One should be very cautious while deciding the brand name/trade name. Once kept, it is difficult to change as goodwill gets associated with the mark. More the usage of mark, greater would be the goodwill generated and hence difficult to change. It is always better to spend some time initially than to regret later.

Now we will start with understanding about what can be a good or bad trademark.

Following are the possible examples of bad trademarks:

  • Full name or surname: It’s a bad idea to keep full name or your surname of yourself or an individual as a trademark. For example, use of surname ‘AGGARWAL’ for chain of restaurants. Bonafide use of a person’s surname may result in dilution of brand name, thereby causing confusion about the source or quality associated with the brand.
  • Descriptive words: This is a common mistake done by most of people. Generally, many people believe that a brand name must be related to the business or must describe the product or business. But it is a strict ‘No’ under trademark registration process in India; he shall try not to opt for descriptive brand name, that is, a brand name that depicts the quality, quantity or any tangible feature of any goods or product.

Such brand names are expressly prohibited under trademark laws of India.

For example, LONG LOCKS – it is word that is essentially describing the common quality of hairs and most commonly used to describe hair type. Hence law will never recommend monopolistic right over the same.

Same is the case with SWEET HONEY, this word describes the inherent quality of honey, in a way which is very common word used to describe honey in general public.

  • Another example is use of the word sweet fragrance. It is a word that clearly “describes” a feature or trait of the goods or services like “Fragrance” for deodorants. Generally, such marks are not allowed registration unless they can show considerable goodwill generated over the years through its usage.
  • The mark, although not clearly descriptive, is thought to be clearly misleading. These are words which generally hint at the quality of the products like “clean and creamy” for Creams.
  • It is a word that clearly designates the place of origin of the goods or services, or that misleads the public into thinking that the goods come from a certain place if they do not.
  • Many of the geographical names are not allowed, like Darjeeling for tea, unless it comes from that area.
  • It is a word in common everyday use or phrase specific to an industry.

What constitutes a good trademark?

A trademark must be chosen carefully. Before launching a product or adopting a new trademark, it may be taken into consideration that the scope of legal protection the mark would obtain, shall depend upon the type of trademark chosen. Some of the possible strategies are:

  • Choose coined words: Opting for a coined word that has no relation to the goods/services with which it is associated. For example, Google, Nokia, Maggi, or Lenovo.
  • Any unrelated word: This will eliminate the chance of getting an objection over a mark to be descriptive. Mark like Asian paints, Apple computers have a different existing meaning, but do not have any relation with the goods/services upon which it is used. Hence, these are arbitrary word and will face fewer objections during the examination process in trademark registration.
  • The more distinctive a trademark is the broader will be the available scope of protection.

Things to avoid while choosing a trademark

Avoid superlative or laudatory words. For example, Supreme, Gold, Deluxe.

Avoid words which have direct reference to the character or quality of the product/service. For example, Best Choice, Easy Cook, Super.

Avoid common personal names or surnames. Such names are registerable only if it has acquired distinctiveness through advertisements and long use. For example, Bajaj and Tata have been registered due to long use and huge advertisements despite the fact that they are surnames.

Avoid descriptive words such as Coffee shop for coffee bars; Cooler for Refrigerators.

Well-known geographical names such as SWISS chocolates or Chicago pizza are also not registerable.

Avoid trademarks confusing similar to existing trademarks. Carry out thorough trademarks search to avoid any possible overlapping with the existing marks in the same or relevant class of goods/services.

What cannot be trademarked?

Following marks are not allowed registration under the Indian Trademarks Act, 1999:

  • Marks that may deceive or confuse the public [S. 9(2) of the Trademarks Act, 1999 (the Act)].
  • Marks that may hurt the religious sentiments of any class or sections of the citizens of India [S. 9(2) of the Act].
  • Marks that may have scandalous or obscene matter [S. 9(2) of the Act].
  • Marks whose use may have been prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950 [S. 9(2) of the Act].
  • Marks that consist of the shape of the goods which results from the nature of the goods themselves [S. 9(3) of the Act].
  • Marks that exclusively comprise of the shape of the goods which is technically necessary [S. 9(3) of the Act].
  • Marks that have shape that give substantial value to the goods [S. 9(3) of the Act].
  • Marks that are confusingly similar to existing marks [S. 11(10) of the Act].
  • Marks that may use generic terms.
  • Weak marks that have not achieved secondary meaning – The owner must demonstrate.
  • That the public recognises the mark as unique to their product.
  • Abandoned trademarks.

Feel free to share your views or resolve your queries just drop a mail at info@company360.in

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