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GOOD TRADEMARKS, BAD TRADEMARKS !

By Lakshmi Hawelikar- Associate Advocate on May 26, 2020

Trademarks Act, 1999 (the “Act”) has defined “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. Further the Act has defined “mark” as a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof. It is to be noted that “trademark” and “mark” both are indicative and inclusive definitions.

There are conventional trademarks and unconventional trademarks. Conventional trademarks will include logo, word, combination of alphabets, numerals. However, there is room for unconventional trademarks as well in India.  Yes, sound is a prominent example of non-conventional trademark which is recognised and registered in India.

So, be it conventional or unconventional, a trademark should be distinctive, novel, coined mark. It should not be descriptive, or cause confusion amongst the public or hurt the religious susceptibilities of any class or section of the citizens of India, comprises or contains scandalous or obscene matter, or is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950 (12 of 1950) or should be similar or identical to earlier trademark.

We had seen above that the Act has laid down indicators of what can be a trademark and what cannot. But the question is, how do I determine whether my coined and invented mark is good enough of being capable of granted registration in India.

Lets us gather some pointers to keep in mind while coming up with a trademark;

  1. The trademark should be coined or arbitrary word. It means it should not be directly indicative of the goods or services upon which it shall be used.  

           For e.g., Apple for computers, Pepsi and Thumbs Up for soft drinks, Kinley for packaged drinking water, Fevicol for adhesive.

       2. The trademark should not include superlative or laudatory words as that indicates quality or excellence to goods or services.

            For e.g., Premium, Best.

      3. The trademark should not contain generic words or common names or surnames.

           For e.g., Aqua for drinking water, confection for chocolate bar.

      4. The trademark should not be similar to earlier existing trademarks.

          For e.g., BAATTA, BISLERRY, PHELIPPES are marks that can be confusingly similar to well-known marks of BATA, BISLERI and PHILIPPS.

Corporates, business invest a lot in their trademark, first by creating them and then marketing their goods/services with it. It is an asset valued in monetary terms in the books of every Company. Hence, it becomes imperative that this asset is carefully planned. So, keep up the parameters in mind and you can create a valuable asset for yourself.

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