A successful trademark can be a game changer for any business. Generally, Trademarks make it easier for the customers to identify a company’s goods and services. A good Trademark not only distinguishes a product/service from other products/services in the market, but is also an effective medium of communication regarding its proprietor, its reputation and the goods/services. This article addresses the common mistakes committed, as well as the problems faced while adopting a trademark.
Understanding the difference between distinctiveness and descriptiveness of a trademark
Descriptive marks
A descriptive mark describes the nature/abilities of a product ostensibly to make it easier for consumers to relate to the product. A descriptive mark may consist of words or phrases which describe the particulars of the goods and services they provide, in order to establish a link between the mark and the product.
Position in India - Under the Trade Marks Act, 1999 (Act) cannot be registered. For example, using mark “Cold” and “Creamy” for selling ice creams cannot be registered, as it just describes the attributes of the product being sold. However, The Hon’ble Supreme Court of India in Godfrey Philips India Limited v. Girnar Food & Beverages (P) Ltd (2005), while determining whether the expression ‘Super Cup’ could be granted registration as a trademark for a tea brand held that, a descriptive trademark may be entitled to protection if it had assumed a secondary meaning or acquired any distinctiveness.
However, Indian courts have accepted J. Thomas McCarthy on Trademarks and Unfair Competition that, “Secondary meaning for a descriptive term is a matter of fact, to be determined from relevant evidence probative of probable customer reaction.”
Distinctive marks
Distinctiveness is an essential feature of a successful trademark. A Trademark which lacks any distinctive character and is not capable of differentiating its product form all the other goods in the market, is very difficult to protect. Lack of distinctiveness is the ground for refusal of a trademark. To make a mark distinctive, one must use/arrange the common words innovatively.
Choosing a good trademark
In the view of creating a connection between the product and the trademark, the mistake people often commit is choosing a descriptive mark in order to make it easier for consumers to relate to the product.
To be successful, a distinctive mark should have one of the following characteristics:
- Suggestive- A buyer must be able to create a connection between the product and the mark. For example- “Land rover” suggests strong and powerful cars.
- Fanciful- A brand have to come up with a new name and over the time the mark will acquired a distinctive character, for example- using “Nikon” for selling cameras.
- Arbitrary- In order to use a word in a trademark, just being descriptive is not enough, for example a person cannot use “Strawberries” as his trademark just because he sells it or any generic word like “juicy “it is just a descriptive term for Strawberries, but registering “Apple” as a trademark for selling computers is a classic example of distinctive mark. Or using “Shell” for selling Fuel.
In the case of Laxmikant V. Patel v. Chetanbhat Shah and Anr. 2001, the Plaintiff was using “Mukta Jeewan Colour Lab” as his trademark over a long time. The Apex Court stated that “By virtue of its prior, continuous and comprehensive use, the word combination has acquired distinctiveness and is therefore protected.”
In conclusion, ultimately a trademark should be easy to remember. It should not be lengthy and complicated which can be forgotten easily. It can be suggestive of the quality or attributes of the products/services, but not descriptive; It is to be understood that an exception to this “absolute bar” under the scheme of the Act is that, a descriptive mark may be registered if the same has acquired any distinctiveness or a secondary significance through use or is a known mark before the date of its application for registration.
