​Introduction to Trademark Law

Why obtain trademarks?

Trademarks and brand names can be an extremely valuable asset for a business – a
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Forbes article states that the trademark ‘Google’ is valued at USD 44 billion and
Microsoft at USD 42 billion (the companies themselves had a market capitalization
ranging between USD 150 – 200 billion at the time the article was published).

Obtaining trademarks with respect to the brand names of the various products / services
offered enables a business to protect its brand value legally more easily.

What can qualify for trademark protection?

Names, logos, images, shapes, taglines, slogans (e.g. ‘Yeh Dil Maange More’), mascots
and anything that can be written or graphically (or pictorially) represented are eligible
for trademark protection. In some countries even colour and smell have been
successfully registered as trademarks. In India, Yahoo and Allianz AG (a German
company) have successfully registered sound marks. However, sound, colour and smell
are known as non-conventional trademarks, and it is relatively more difficult to obtain
registration for them.

Is it essential to register a trademark?

It is always prudent to register a trademark. Enforcing intellectual property rights with

respect to a brand which is not registered as a trademark is very difficult and
inconvenient – the owner has to file a legal claim for ‘​passing-off​’ in a court, which
requires him to factually establish the following:

i) his brand already enjoyed some kind of goodwill in the market,

ii) the infringer misrepresented his products as those of the brand owner and that
iii) this misrepresentation caused damage to the actual owner’s business.

Having a registered trademark, on the other hand, simplifies the enforcement process. If
another entity (e.g. a competitor) uses a name that is similar to a trademark, the
business is only required to prove that it already owns the registered trademark, and
that a similar mark was used by the infringer for marketing his products. The trademark
owner ​is not required to prove that ​his brand is distinctive and has a reputation in
the market​, a ​ nd h
​ e is not required to establish that ​he has been harmed by such
usage by an infringer – the court will typically direct the infringer to stop using the
mark in relation to his products immediately. The quantum of harm suffered, however, is
relevant in determining the amount of damages that should be awarded to the
trademark owner.

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​http://www.forbes.com/sites/seanstonefield/2011/06/15/the-10-most-valuable-trademarks/

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Further, registration allows a business to use the ® symbol after the mark (the ​®
symbol can only be used in connection with registered trademarks). The ® symbol
provides a formal notice to the general population that the business your business has
exclusive rights to use that name. This can reduce the chances of others selling products
under the same brand name.

If another entity intends to use an identical or a similar brand name, the registered
trademark will appear in the trademark search reports (a trademark search is the first
step for registering a trademark) conducted by the entity. The Registry will reject any
applications if they are identical or similar to an existing trademark.

Registration can increase the valuation of the business, which is useful while raising a
financial investment, for a merger or acquisition with a strategic investor, or if the brand
name is sold off or licensed by a business to raise funds.

A trademark can be registered for brand names, logos, symbols, signature, numerals, a
website, shapes, images, trade dress, 3D designs, packaging, colour, letters and
numerals (in combination or independently), combination of colours with a word or
device, and anything else that you can graphically represent. In fact, Yahoo has
successfully registered a trademark for its yodel (a special way in which its name is
pronounced), which is a sound trademark. Under the new Trademark Rules, 2017,
specific rules have been laid down for registering sound marks. In some countries,
scents associated with a particular product have been registered as a trademark, by
providing a chemical formula of the compound and a sample of the product. However,
the difficulty in presenting sounds or smells graphically is the reason that such
trademarks have not yet gained popularity.

Before proceeding further, it is essential for a business to understand what kinds of

names are eligible for registration as trademarks, and the legal provisions governing
such names.

Which names are eligible for registration as trademarks?

What kind of names cannot be registered under
trademark law?

Choosing an appropriate trademark may be governed by business considerations. Most

businesses attempt at creating unique, catchy and short brand names. Choice of brand
names also depends on the sector in which the business is operating. For example,
pharmaceutical companies give medicines names which will be easier for doctors to
remember when they prescribe medicines.

For a name to be eligible for registration as a trademark, it must meet certain

requirements under the Trademarks Act – we are classifying them into two categories
below – ​absolute​ ​grounds​ and ​relative grounds​:

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 i) Absolute grounds

● The proposed name should have a ‘distinctive’ character that is, it should
be capable of distinguishing the goods and services of one seller from
another. Therefore, in a market where there are many tablet PC
manufacturers, a new company which intends to trademark the word
‘Tablet’ may be refused registration for its trademark because the word
‘Tablet’ will not distinguish its products.

● It should not be a functional trademark, i.e. it should not exclusively

designate the kind, quality, quantity or intended purpose of the goods/
services. Similarly, a trademark for shape of specific goods cannot be
registered if the shape arises out of the nature of the goods or is
necessary to achieve a technical result.

For example, the expression ‘Food-Grade’ for a manufacturer of

food-grade plastic bottles cannot be trademarked because it is designating
a quality of the plastic bottles. Similarly, the word “chocolate” for a
chocolate bar cannot be trademarked. ‘Spherical’ shape for a ball
manufacturer, or the cylindrical shape of an external antenna of an
electronic device cannot be registered, because the shape is integral to
the function that the product serves.

● The mark should not consist exclusively of marks which have become
customary in the jargon of the trade in whose context it is used. Such
trademarks are called generic trademarks.

For example, escalator (formerly owned by Otis Elevator Company),

aspirin (owned by Bayer AG) and zipper (owned by B.F. Goodrich) have
lost trademark protection because their names became used customarily
as a noun. The company Xerox has carried out campaigns educating users
to use the word ‘Xerox’ not as a synonym for the word photocopy, but as
an ‘adjective’ for photocopy machines made by the company.

● A domain name can be protected as a trademark only in association with a

product or service, not in isolation with it. For example, if a company
manufacturing speakers under the brand-name Arctisound purchased a
domain name called ‘tigerspeakers.com’, the brand name Arctisound can
be eligible for trademark registration, but not the domain name
tigerspeakers.com. If, however, the word ‘tigerspeakers’ was also used in
relation with the sound systems, then the domain name can be registered.

● Names of places or geographical locations, if they are used in a fanciful

context, can be accepted. For example, ‘Silicon Valley Cupboards’ may be
a registrable trademark, as the name Silicon Valley has nothing to do with
the product, but ‘Silicon Valley Softwares’ or ‘Wall Street Brokers’ cannot
be registered because in each case the name of the place is directly
associated with the industry, i.e. Silicon Valley is houses numerous
technology companies (both hardware and software) and Wall Street is
famous as the prime location for a financial services business in the US.
● When a registered trade mark has multiple aspects to it, the protection

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 conferred is to the trademark taken as a whole, and not to its individual
parts. For example, if Café Coffee Day is a registered trademark, its
owners cannot challenge the use of the word ‘Café’ or ‘Coffee’ by a
competitor, such as Café Mocha or Costa Coffee.

● A trademark cannot be registered if it can deceive the public or cause

confusion, if it is likely to hurt the religious sentiments of any class, if
contains scandalous or obscene matter, or if its use is prohibited under
the Emblems and Names (Prevention of Improper Use) Act, 1950
(​Emblems Act​). No person can use any name or emblem specified in the
schedule to the Emblems Act for commercial purposes without the
previous permission of the Central Government. The schedule to the
Emblems Act lists out twenty one names and emblems of national and
international relevance, such as the Indian Flag, the United Nations
Organization, Ashok Chakra, etc. (the full list of items listed under the act
is provided in Annexure I).

The grounds mentioned above are called Absolute Grounds under

trademark law. In addition to absolute grounds, the requirements
mentioned below (called ​Relative Grounds under trademark law) must
also be kept in mind. However, these grounds are usually invoked by the
Registrar in the event of an objection raised by another entity during the
opposition process.

Therefore, for businesses who seek to protect their existing brand names
(even if they are unregistered) and trademarks, periodically browsing
through the Trademarks Journal is important, so that they may be able to
file in opposition in case an entity seeks registration of similar marks.

ii) Relative grounds

● Similarly, a trademark which is identical or similar to an earlier trademark

in respect of the same goods may be refused registration if there is a
likelihood of confusion on the part of the public. The decision on likelihood
of confusion is taken by the Registrar.

● A trademark which is similar to an existing trademark (owned by a

different proprietor), but is proposed to be used with respect to a different
set of goods or services can be registered, unless it confers an undue
advantage on the new applicant, or if it is beneficial or detrimental to the
earlier trademark.

● If an application is made for the registration of a trade mark which

suggests a connection with any living person, or a person whose death
took place within 20 years before the date of application, the Registrar
may require the applicant to furnish written consent of the living person
(or the legal representative of the deceased person) as to the connection
appearing on the trademark before proceeding further with the
application. For example, a trademark application for a ‘Steve Jobs
Camera’ or a ‘Reliance Shoes’ mark may attract the requirement of
furnishing consent of the legal representative.

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 ● If a trademark is a well-known mark – for example, if, for example,
Samsung has a registered a trademark for “Samsung” and “Galaxy” under
Class 38 (​Telecommunications​), an application by an unrelated entity to
register the word “Samsung” in relation to shoes may not be allowed,
because Samsung is a well-known mark. In such cases, it does not matter
whether the applicant is looking to register the Samsung mark under a
different class.

(See Sections 9 to 17, Trademarks Act, 1999)

A reading of the requirements above will indicate that there are various issues on which
the Trademarks Registrar has to take a subjective opinion. For example, deciding
whether a proposed name may cause a ‘likelihood of confusion’, or is ‘distinctive’, or
confers ‘undue advantage’ is not easy in every situation. The Trademarks Act lays down
the principles which the Registrar must observe while exercising his discretion. He is also
empowered to conduct independent searches and take evidence (by affidavits expert
evidence, evidence of turnover and surveys are some of the types of evidence that can
be accepted).

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under applicable law.