Trademarks: Strength and search (Part 1)

This article is the first part of a three-part series which answers all the basic questions on trademark law such as what is a trademark, what makes a trademark strong and how to conduct a trademark search.

Trademarks are one of the most popular and visible intellectual properties in the world. Be it phones, appliances, consumables or services – one comes across dozens of trademarks every day. Their filing, enforcement, importance and economic value are important for every business owner to know and appreciate. This 3-part series aims to provide an overview of the trademark law for the patient and a set of quick answers for those hurried fact checkers.

Q. What is a trademark?

The concept of trademark is as old as trade and commerce itself. A trader earns goodwill over time based on the products/services that he sells. This goodwill, in a small market, would be associated with the trader alone – his face value. In a larger market, a mark is used instead to draw a connection between the product/service and the trader/his goodwill. This mark, which acts as a source identifier, is called as a trademark.

Three factors constitute a trademark – 

A mark + which is graphically represented (can be perceived by sensory organs) + is distinguishable

E.g. What is the first thing that comes to our mind when we see the following symbol?

The ‘yellow M’ symbol is a ‘mark’ that we can ‘visually identify’ and helps us identify it with McDonald’s, the fast food company. We do not associate it with any other company, hence making the symbol ‘distinguishable’.

Q. What can act as a trademark?

The list of items that are included within the definition of a ‘mark’ are provided in Section 2(1)(m) of the Trade Marks Act, 1999 (‘the Act’) as “a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.”

Here’s a table to help understand Section 2(1)(m) of the Act better –

DeviceAnchor device
Heading Tagline of Nike
Label
Name Surname of Henry Ford
Signature
Word
Letter
NumeralMonkey 555 brooms
Shape of GoodsImage result for The coke bottle vector imageShape of the bottle
Packaging Tiffany’s jewellery
Colours                      

This list is however not exhaustive as more non-conventional marks are being identified as trademarks and granted protection in the recent years. Some of them include smell, taste, sound, motion and moving images.

Q. What cannot be a trademark?

Section 9(1) of the Act enlists primary grounds on which marks cannot be granted a trademarks status. Marks which do not have a distinctive character; marks which intend to designate the kind, quality, quantity, intended purpose, value, etc; and marks of common customary usage in a bona fide manner cannot be granted the status of a trademark.

According to Section 9(2) of the Act, the following marks cannot be registered as trademarks – 

  • which deceive the public or cause confusion
  • which are likely to hurt the religious sentiments of the public
  • which are scandalous or obscene in nature 
  • prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950 

According to our expert Akanksha Mathur, apart from the marks mentioned in Section 9 of the Act, Section 11 of the Act also provides for what cannot be a trademark. She says, “Section 11 rules out marks which are identical or similar to another mark.

Apart from that, she also underlines another set of marks which are excluded from being a trademark, the International Nonproprietary Names (INNs). INNs are internationally recognized names for pharmaceutical substances which are declared by the World Health Organization (WHO). The Act encapsulates this in Section 13 of the Act.

Q. What makes a strong trademark?

A strong trademark is unique and difficult to copy. The mark must be unique internally (without comparing it to other marks) and externally (by comparing it to earlier marks) to increase its chances at registration. If these criteria are not met, the mark may be refused on the grounds of Section 9 and 11 of the Act. 

According to Section 9 of the Act, the mark should be inherently distinguishable and non-descriptive in nature. The scale to judge the inherent strength of a word mark, from strongest to weakest marks, is given below –

Concocted markThe mark has no dictionary meaning. The mark will be inherently unique and it’s difficult for an infringer to justify his adoption of the mark.Example – Docomo, Kodak
Arbitrary markUsage of a random word (with a dictionary meaning) to goods/services completely unrelated to the word.’Apple’ for computers, ‘Paperboat’ for beverages
Suggestive markUse of a word that hints at the goods/services offered, but doesn’t describe it.
‘Aquafina’ for water, ‘CommonFloor’ for  real estate services
Descriptive markUse of words that describe the goods/services – their quality, quantity, nature, location etc. This mark is the weakest and highly likely to be refused under Section 9 of the Act.’The Manali Hotel’ for hotel situated in Manali, ‘Aamras’ for mango juice

As per Section 11 of the Act, a mark should be examined externally, with other marks. If there exists another mark identical or similar to the proposed mark in an identical or similar business, the latter mark becomes vulnerable to being rejected under Section 11 of the Act. Therefore, it is very important to conduct trademark searches on the Trade Mark Registry’s database available at http://ipindiaonline.gov.in/tmrpublicsearch/frmmain.aspx and a general search on Google. It is preferable to engage a legal professional to assess the strength of the mark.

Akanksha opines that ideally, a trademark which is concocted/invented or arbitrary and does not refer to a third party has the strongest chance of being registered. 

Q. Steps to conduct an online trademark search. 

  1. Identify the Class in which the goods/services fall under Nice Classification. 
  2. Conduct a search on Trade Mark Registry’s official database. There are 3 type of searches that are possible – 
  • The ‘Starts with’ search to find marks starting with the search word. If you wish to conduct a search for the word ‘Alpha’, the ‘Starts with’ search shows results starting with ‘Alpha’ such as ‘Alpha King’ and ‘Alpha Beta’. 
  • The ‘Contains’ search provides results containing the search word and not necessarily starting with it.  A ‘Contains’ search for ‘Alpha’ could give results such as ‘The Alpha King’ and ‘One Alpha Beta’. 
  • ‘Match with’ search shows results of marks that sound like the search word. The ‘Match with’ search for ‘Alpha’ provides results like ‘Kalpha’ and ‘Palpatation’ 

Akanksha believes that while conducting the public search, one should employ as many search strings as possible to make the search comprehensive. She describes a situation for a search for a hypothetical mark called “KOMPARIFY.” So the search strings will include short strings which may be phonetically or otherwise similar like KOM, COM, PARIFY, PERRYFI etc. in the relevant class. She also states that “if a mark is a composite mark i.e. a mark having more than one element like a word and a design, one should conduct a  separate search for each.

  1. For logo marks, searches are conducted using Vienna Classification. Vienna Classification has 29 categories to identify figurative elements of a logo such as stars, shields, trees, humans, etc., each of which have a 6-digit code which is written as **.**.**. One logo can have more than one figurative element, hence more than one code. E.g.
https://lh5.googleusercontent.com/f7UDkMFZzQwFu-jbMEeRqwaA1dWBUw3SNkcb9ZTah15wkp11Lpv7XdRyiToFnC6Y1rcd7orxK_eTWdTzDIc2n8iwvBFK23k36rWIvcecSArlFlJHQNOPwRrz__AuCjtf3zagL7uEnKcgQc09cg

The figurative elements of this political party’s symbol are hammer, sickle and star. Its 6-digit Vienna classification code would be – 

14.07.01 – Hammers, sledge-hammers, mallets

14.09.07 – Scythes, sickles

01.01.02 – One star

Often, the classification codes are not uniformly assigned and hence any search conducted using these codes may not be comprehensive.

The above steps are general and for the purpose of instruction only. Best results can be achieved by a legal professional.

  1. For every search, a report is generated displaying all marks that were applied for, both registered and unregistered. Marks that are registered and have an earlier date of use pose the highest risk. Pending marks which are identical need to be scrutinised and a background should be checked extensively. Akanksha states that “Based on the search report and background check, the kind of objections can be preempted. The risk of objections can be mitigated to an extent if documents evidencing use of the Applicant’s (client) mark can be submitted to establish prior or concurrent use.” If the use of the client’s mark is longer than that of the cited mark, it becomes easier to overcome such objections. 
  1. All the results should be analysed and reported to the client in a document which should be broken down into 3 parts: first is the analysis of the distinguishability of the mark as per Section 9 of the Act, the second being the risk posed by the conflicting marks as per Section 11 of the Act and the third is the results of a common law search/internet search conducted (of use of the mark or similar mark on the first five page of Google) across all countries.

Conclusion

These steps are a vital precursor for the adoption and registration of a trademark. If the concerned individual is diligent in following the mentioned guidelines, there is a higher chance that the application will be accepted for registration and low possibility of enforcement by third parties in form of trademark infringement suits or notices. 

Endnote: Part 2 of the series (Link to part 2) discusses the value of a trademark, what is a trademark infringement and its consequences.

DISCLAIMER: The information provided in this article is for educational purpose only. The same cannot be construed as legal advice.

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