Trademarks are the names and logos used by business entities or individuals for business. Registration of trademark is necessary to protect the goodwill and reputation of one’s business from competitors. Selecting a strong trademark is very important as it distinguishes the mark from other available marks in the trade. Use of a word that is commonly required by other traders is to be avoided as the idea behind using a trademark is to distinguish one’s own products from those of others. In order to register a trademark it should be “capable of distinguishing” the trademarked goods or services from those of other traders. A trademark should be appealing and have an agreeable image or connotation
Trying to market a poor trademark which is similar to another registered mark may entangle you in legal disputes Therefore, before registration of a trademark it is essential to know the marks which are prohibited under the trademark law.
What can be registered?
Surnames, proper names and words describing goods and services can be registered as a trademark. For example Birla Corporation Limited uses their surname Birla as their trademark. A trademark can be registered if it is able to distinguish its product in the market and it is not used to deceive or confuse the customer.
What cannot be registered?
Registration of the following marks is prohibited under the trademark law:
- Trademarks Devoid of distinctive character: A mark which do not distinguish the goods and services from others or which describes the nature and quality of goods and services or has become customary in respect of the relevant goods or services cannot be registered. For example, Otis’s trademark “Escalator” for moving staircases became a generic word and therefore, the Trademark Office concluded that Otis cannot use its trademark since the mark has become customary in respect of moving stairs.
- Marks that Deceive or confuse the customer: A mark which is an imitation of a well known trademark for same or similar goods and can deceive consumers cannot be registered as a trademark. For example- Using a mark “Colmate” with similar get up of “Colgate” for toothpaste would not be registered as a trademark.
- Scandalous marks: Marks that can hurt religious sentiments or contains obscene matter cannot be registered. For example, the mark “Hallelujah” for clothing was not given registration.
- Prohibited marks: A mark where the application for registration is in bad faith; or seal/flag of the Republic or of other countries, or a mark which is prohibited under law cannot be registered. For example- National flag of a country.
- Shape of goods: If the shape of the good results in nature of the goods or gives technical results and substantial value, such a mark cannot be registered. This is because it would limit the development of industries which manufacture it. For example- shape of Vienetta ice cream that resulted from the nature of the product itself was held not registrable.
- Earlier trademark: Any mark which is similar to an earlier trade mark in identity and similarity in goods and services cannot be registered. For example- another “Kodak” for camera or “Fair and lovely” for cosmetics would not be registered as a trademark.
- Geographical Names: Geographical names cannot be used when a particular place is famous for a particular good/ service. For example, “Nilgiris” cannot be used for tea since Nilgiri is famous for its tea. However, if there is no connection between a particular place and product, it can still be registered, for example “North Pole” for ice-creams can be registered, since North Pole is not connected to ice-creams in any way.
These simple rules should be kept in mind while selecting a good trade name. Keeping these rules in mind, one can select a strong trademark which would be distinctive and would be legally enforceable as well as easily registrable.
[Guest article by Pankhi Dutta, IP Analyst at Intepat IP Services Pvt Ltd, Bangalore.]