Question by Prachi Kapte Dhillon, Amaya Arts Pvt. Ltd.
Jurisdiction – India
The requirements for obtaining a trademark are –
- There must be a mark;
- The mark must be capable of being represented graphically; and,
- The mark must be able to distinguish goods or services of one person from those of another.
Each of these will be explained below.
(a) There must be a mark
A “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or a combination of the above. As indicated by the word “includes,” the definition of a “mark” given in the Trade Marks Act, 1999, is not exhaustive. Other types of marks that are not included in the definition – such as sound, movement/motion and design – have also been granted trademark protection.
Some examples of marks that are protected as trademarks are –
The definition of a “mark” is, thus, very wide and as long as the following conditions are fulfilled, a trademark for any mark can be obtained.
(b) The mark must be capable of being represented graphically
Graphical representation means that the mark must be capable of being expressed visually without any ambiguity. While filing an application for registration of a trademark, the actual form of the mark must be submitted. If the mark is for a word, the word itself must be written. If the mark is a specific shape, a visual representation of the shape must be submitted. Sound marks are represented through their musical notation. If the mark is stylized in a specific manner, such as Coca Cola, then the mark must be represented with the exact stylization. The rationale behind this is to identify with precision the mark that is protected.
Meeting this requirement for non-traditional marks such as smell and texture can be difficult because such marks cannot be represented graphically with accuracy. As a result, smell marks are not protected in the European Union because a mere description of the smell, its chemical composition or a sample of the smell does not constitute precise graphical representation (Ralf Sieckmann v. Deutsches Patent- und Markenamt). No smell marks have been granted in India yet, and it is possible that the concerns expressed in the EU would also hold true in India.
(c) The mark must be able to distinguish goods or services of one person from those of another
A trademark performs two important functions –
- It connects goods or services with their source. E.g. Use of the Nike swoosh symbol on shoes creates an immediate association between the goods (shoes) and the source (Nike).
- It distinguishes goods or services of one entity from those of another. E.g. Use of the Nike swoosh symbol on shoes distinguishes Nike’s shoes from those sold by Adidas or Puma (who would also use their respective trademarks on their shoes for the above reasons).
Hence distinctiveness of the mark is mandatory for obtaining a trademark. Highly distinctive marks are given stronger protection than marks that are less distinctive. Marks devoid of distinctiveness cannot be protected as trademarks. On the basis of their distinctiveness, marks are classified as (Abercrombie & Fitch v. Hunting World) –
- Fanciful – Marks that are invented and do not mean anything if detached from the goods or services for which they are used. E.g. Kodak (cameras) is a made up word which does not have a meaning per se.
- Arbitrary – Common words or symbols that are used for completely unconnected goods or services. E.g. Apple used for computers is arbitrary because the word “apple” has no relation with computers whatsoever; similarly, Dove is arbitrary for soaps and shampoos.
- Suggestive – Marks that are indicative of the nature, quality or characteristics of their goods or services. E.g. Netflix indicates movies (‘flicks’) on the internet (‘net’) and is hence suggestive of the nature of the website; similarly, Playboy is a suggestive mark.
- Descriptive – Marks that directly describe the nature, quality or characteristics of the goods or services. E.g. The mark Sharp for televisions directly indicates the characteristics of the goods (sharp quality of the televisions); similarly, Real for fruit juice is descriptive.
- Generic – Marks that are commonly used for the goods or services. E.g. Xerox for photocopy machines; Aspirin.
Fanciful, arbitrary and suggestive marks are considered inherently distinctive and are directly eligible for protection under trademark law.
Descriptive marks are only eligible for protection if they have acquired a secondary meaning (also known as acquired distinctiveness), i.e. if, through use, they are more commonly associated with the goods/services than their common meaning. For instance, the mark ‘Burger King’ is more associated with the fast food restaurant than the literal meaning of the words.
Generic marks cannot be registered as trademarks. This is known as the ‘spectrum of distinctiveness.’
Thus for a mark to be protected as a trademark, distinctiveness and graphical representation are mandatory. While determining distinctiveness, one must ensure that the same or similar mark is not already being used in the relevant class of goods or products. For instance, the mark ‘Pepsey’ cannot be used for beverages because it is not sufficiently distinct from the existing mark ‘Pepsi.’ However, ‘Pepsey’ for electronic devices may be used because a similar mark is not used for such devices, making the mark distinctive.
As long as the above conditions are satisfied, a mark, which could be anything from a visible word to an invisible sound, can be registered as a trademark.
Answers to some Frequently Asked Questions about trademarks are available here.
Image from here.
 Section 2(1)(m), Trade Marks Act, 1999.
 Section 2(1)(zb), Trade Marks Act, 1999.
 The motion of a Lamborghini car door.