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What’s there in a Trademark?
Trademark is the most valuable asset, for a trademark owner. A Trademark is your product identity; it is communication between Company and consumer. It is important for every marketing and sales personnel to make sure that the Trademark for a product is as special and unique as the product. In this global world, company must ensure that it can use its Trademark worldwide where intends to sell the product as also on the internet (this includes Domain Name).
The Trademark or a Brand name is a:
¨ Word (COLGATE, PEPSI, COCA COLA);
¨ Symbol (PEPSI Logo, McDonald’s M Logo);
¨ Device/ Pictures (AMUL GIRL, PILLSBURY DOUGHBOY, A CAT IN PRAKASH TRANSPORTS, ASIAN PAINTS’ GATTU);
¨ Name (ALLEN SOLLY, RAYMOND VEIL, MOTILAL OSWAL, VIMAL);
¨ Surname (TATA, BIRLA, BAJAJ, MCDONALD’S, BATA);
¨ Signature (LOUIS PHILLIP, CADBURY);
¨ Letter (BMW, IBM, BB Soap, DHL, ICICI);
¨ Numeral (555 for Cigarettes, 777 and 501 for washing soap);
Or combination of any of these which identifies.
Under the Trademarks Act, 1999 the mark also includes:
¨ Color Scheme;
¨ Packaging;
¨ Shape of goods.
Any Trademark associated with a Service is known as a Service Mark e.g. ORANGE for Mobile phone service, BLUE DART for courier service.
Types of Trademarks:
1) Coined or Invented Trademarks:
These Trademarks are meaningless trademarks which enjoys highest amount of legal protection.
Example: - KODAK, RANBAXY, DABUR.
These marks also include common words but arbitrary in connection with the products or services.
Example: -TORTOISE for Mosquito coil, CAMEL for Cigarettes, APPLE for Computers, OMEGA for watch.
2) Suggestive or Semi-descriptive Trademarks:
Trademarks preferred by marketing people for creating association with the product without being descriptive, easily remembered and easy to promote.Suggestive marks also includes plain dictionary words
Example: -SWATCH, TITAN, RELIANCE, INFO GATE, CYBERSURFER, HEAD & SHOULDER.
The legal protection for these types of marks is lower. Many times, degree of protection varies according to the Trademark, which could be considered as Semi descriptive or descriptive. There is a thin difference between semi descriptive or descriptive Trademarks and can be protected by acquiring secondary meaning with long, extensive and uninterrupted use.
3) Descriptive Trademarks:
Marketing people are keen on finding the name, which communicates product to consumers. But protection is granted by the law to such trademarks is low until is being used extensively and continuously for many years with huge sale and advertising to popularize the same.Examples:- RAPID RICE, SWISS CHOCOLATE, LITE FOR BEER, EASY CASH, ANY TIME MONEY, HAIR & CARE, FAIR & LOVELY.
4) House Marks:
Trade Name or House mark help to identifies a Company or a business and services as the name of the Company or a business. Many times, a Group of Companies use its house mark on its products or services along with or without any other Trademark.
Example: - Godrej’s Jumpin and Godrej Storewell, Tata Tea, Tata Salt, tata Press, Nestle’s Nestea, Nestle’s Milo, Bajaj Scooter, Bajaj Majestic for Toaster, Birla White Cement, Britannia Goodday, Britannia Cream Treat, Amul Cheese, Dabur Honey.
5) Figurative Trademarks:
Any or Each of the above mark may be combined with figurative elements or marks and possible to use a figurative mark in isolation or alone. Such figurative elements are added or used exclusively for different markets where there is communication problem i.e. different languages are used in different markets.
The Figurative marks can also be like word marks of following types:
¨ Meaningless, fancy or pure fantasy marks
¨ Arbitrary or marks without any relevance with the product
o Example:- Half bitten apple for APPLE Computers, ARROW for Shirts
¨ Suggestive (Cow for MILKMAID), TWO ELEPHANTS pulling a chain in opposite side joined with FEVICOL)
¨ Descriptive (device or picture of Wheat for Bread, device of hand showing No. 1 for McDowell’s No. 1 Whisky, Running Deer through letter “S” for Savani Transports)
For its distinctiveness full legal protection is granted to such figurative marks.
Generic words as Trademarks
Generic, chemical or ingredient’s original name, however some of the Trademarks used generically and hence became generic and not protected as a Trademark.
Example: - ASPIRIN, THERMOS, KEROSENE ESCALATOR, GRIPE WATER, REFRIGERATOR
Today, many companies are facing dilution of their Trademarks due to its general use such as XEROX for photocopies, VELCRO for fasteners etc.
What is a good Trademark?
The best trademarks are:
¨Inventive;
¨Non – descriptive words; and
¨Distinctive devices.
A Trademark registers only if it is distinctive, it must different from other goods or services of a trade. Distinctiveness can be in the mark itself as in the case of invented words, non-descriptive words, and devices and can also be acquired by user in case of suggestive and descriptive words, surnames etc. depending upon extent of use, nature of the goods etc.
There are many marks which are purely descriptive and laudatory expressions or very common surnames which cannot be registered even with long use.
Example: - ALL WOOL, JANATA, PERFECTION, SIMLA, BOMBAY, NATIONAL etc.
It is therefore advisable to avoid choosing a word which are directly descriptive of goods or having direct reference to characters or quality of goods, common surnames and geographical names.
Example: - MILK MORE, MILKY WAY, SCOTCH WHISKY (Whisky manufactured at Scotland).
Following Trademarks cannot be registered under the Trademarks Law:
· A mark, the use of which is likely to deceive or cause confusion, or is contrary to any law for the time being in force.
· A mark in respect of any goods or description of goods which is identical with or deceptively similar to an already registered Trademark.
· A mark which comprises or contains scandalous or obscene matter, or any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India.
· A mark which is otherwise disentitled to protection in a court.
· A word which is commonly used and accepted name of any single chemical element or single chemical compound in respect of any chemical substance (generic marks).
· Marks which suggest a connection with any living or recently deceased person may not be registered, except with the consent of that person or of his legal representatives (e.g. founder’s photo for KFC “KENTUCKY FRIED CHICKEN”, founder’s photo on HIMTAJ OIL).
Some do’s and don’ts of a good Trademark:
DO’S
¨ Choose a Trademark which is appealing to eye and ear, short, easy to pronounce and remember as well as easy to spell and write.
¨ Choose a Trademark which satisfies the requirements of registration.
¨ Conduct a complete availability search for a Trademark.
o search at the Trademarks office in India
o Search in the entire available database like industry magazines /periodicals, Yellow Pages, market resources etc.
o Legal clearance is must to avoid any future disputes.
¨ Distinguish Trademark from words in printed matters or materials like Agreements, Invoice copies, Instruction materials etc, the Trademark should be written either in block letters or within quotation marks or always use appropriate symbols like ® or TM.
¨ Use a Trademark with correct style, spelling and in its exact format.
¨ Advertise Trademarks rather than Products or Services for creating a brand loyalty among the consumers. (e.g. COKE for COCA COLA, BAND – AID for first aid dressing from Johnson & Johnson)
¨ Register and maintain registration of the Trademark for many advantages like protection against infringement of trademark, exclusive use of the mark and prevent others from using, applying the said Trademark without proper authority.
¨ Consider registering a Trademark in all the countries of potential interest.
¨ Keep a watch on unauthorized use of identical and/or similar Trademarks and take appropriate action at the earliest to prevent such use.
¨ Acknowledge with a footnote, if you are using a Trademark of another party.
¨ Make and create awareness among the internal staff for the proper selection and use of a Trademark.
¨ Appoint a person to supervise and co-ordinate the adoption and use of the Trademarkto review advertising, packaging and other documentation for compliance with the basic rules of a Trademark and he should conduct a periodical audit to monitor compliance on all the printed matters including packaging.
¨ Use symbol ® on the shoulder of a mark in case of Registered Trademark and TM in case of unregistered Trademarks.
DON’TS
¨ Choose a Trademark which is descriptive or having direct reference to the quality or characteristics of the Product.
¨ Use plural words in a Trademark.
¨ Modify a Trademark from its possessive form.
¨ Adopt any generic word as a Trademark, Like ASPIRIN
¨ Use a Trademark as a noun but use an adjective modifying a noun.
¨ Use a Trademark as a verb. Trademarks are for Products or Services and never actions. E.g. it is not XEROXING but Photocopying.
Trade Dress
Trade Dress is the overall appearance of the goods or their packaging or of advertising or the means for delivering goods or services. Trade Dress like a Trademark, is protectable if it is distinctive, inventive, arbitrary or suggestive features or combination of any its features will make the Trade Dress distinctive.Trade Dress can be register as a Trademark, as one or more distinctive features will make the Trade Dress registrable as a Trademark butthe other form of Intellectual Property will be more appropriate such as Copyright or Design registration. Trade Dress is fully protectable under the law provided if it is original and distinctive.
The importance of the visual impact of a Trademark is very important. When a customer is looking for the product concentrates on:-
¨ Color scheme of the respective label and package,
¨ Graphical presentation
¨ Product name.
Companies therefore for the House Mark as well as for important Trademarks, uses special fonts, Colors and visual impact which are used as uniformity and in accordance with the guidelines by the management.
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