This article on ‘The Distinctiveness of a Trademark‘ was written by Khadeeja Zaidi, an intern at Legal Upanishad.
Introduction
Whether you are thinking about applying your maiden Trademark Application or you already have a plethora of Registered Trademarks, you then ought to know and appreciate that the first stage to obtaining your trademark is uniqueness.
What distinguishes your brand, name, or logo in the marketplace is the key query in such a situation. Alternatively, “What will draw business?” This article will cover the Distinctiveness of a trademark, its many degrees, and how having appropriate information may assist you in successfully registering your proposed trademark.
What is Trademark Distinctiveness & Why Does it Matter?
Trademark Distinctiveness relates to how distinctive your mark is in relation to your offerings, which are the things (such as publications, mugs, etc.) or services (such as legal services, business advising, etc.) you sell. The characteristics of your mark that distinguish your products as coming from a certain business are referred to as this. You must carefully consider how unique your trademark is in relation to the categories of goods and services you intend to utilise it with as part of your company or brand. Keep in mind that if your suggested mark isn’t adequately distinctive, you won’t be able to complete the trademark registration procedure.
In this section, we’ll go through the many trademark categories that might help you determine whether your suggested trademark is unique enough to be protected as a trademark. The categories listed below hold the tremendous ability to make or destroy your trademark application, therefore understanding and using them is crucial.
Arbitrary & Fanciful or Coined Phrase Marks
The most unique markings, those that are arbitrary, fantastical, or created phrase marks, fall under the first group. All of them might be any term, phrase, or colour that has nothing to do with the goods or services you’re attempting to sell.
- Fanciful Phrase – It alludes to an idea that you had in the spur of the moment. To be more precise, it can include a new term or name. A made-up term is Xerox, for example.
- Arbitrary Phrase – It refers to anything that isn’t necessarily made up, but it may or may not have anything to do with the kinds of goods or services you offer. Take the well-known computer company Apple Inc. as an example; other than the usage of an apple in that emblem, the company has no connection to apples.
Suggestive Marks
Suggestion-based trademarks fall under the second degree of trademark uniqueness. The phrase, slogan, colours, phrases, or pictures you employ need not necessarily represent the product or service you’re offering; nevertheless, they do imply the sort of item you’re going to sell; for example, Netflix offers streaming programs and Airbus for aeroplanes.
- Threshold of Registrability – Four main categories can be used to classify trademark uniqueness. The two trademark classifications listed above surpass the minimum requirements for what can be registered as a trademark, while the other two are below the minimum. Simply descriptive and general marks are what they are known as.
Merely Descriptive Marks
- A mark is regarded as purely descriptive if it defines the origin, characteristic, trait, operation, ingredient, usage, or purpose of the items or services described in the trademark registration. It implies that you describe the feature, product, or service you are offering or providing, in other words. Simply descriptive marks, such as “creamy and chilly” for ice cream, are examples.
Generic Marks
- Generic marks are those that, through continuous usage, have become so well recognised in the general public’s everyday use of English that the mark is no longer connected with the individual brand or corporate organisation, and instead acquires the meaning of a certain product and/or service themselves.
Marks like Aspirin, Cellophane, as well as Velcro, have obtained a generic place in society today owing to their widespread use in a way that they are synonymously used in everyday language for a product or service that is the same in nature but is not necessarily related to the actual brand name.
How to Come Up with a Distinctive Trademark?
You could think the following elements go beyond being general and just descriptive:
- Utilise names and terms that may be used in several contexts. It’s a lot easier to claim that phrase or word has a suggestive meaning rather than being purely descriptive if it has a secondary meaning, especially if that meaning fits the kind of company you do.
- Look for a mark that defies common sense. Seek something different from what you had anticipated or been considering. It may have some industrial relevance, but you wouldn’t expect someone to utilise it as a trademark for their goods.
- Collaborate your mark if you’re inclined to use a word that has been coined. Assume you have created a term that you truly enjoy, but you have to link it with the items or services you provide. In this situation, you may think about matching up your mark.
- Alternatively, if you choose an arbitrary, imaginative, or generated mark and pair it with a descriptive word, you could obtain a trademark just on the mark itself and utilise the descriptive word in your marketing plan and marketing campaigns to let clients know about the goods or services.
Case Laws
In The Imperial Tobacco Co. of India Ltd. v. The Registrar of Trademarks[1], According to the Calcutta High Court, uniqueness is “some characteristic in the trademark which distinguishes the products thus marked from those of other makers of such things.”’
In W.N. Sharpe Ld. v. Solomon Bros Ld.[2], It was determined that several terms, including “great,” “excellent,” or “superfine,” could not be registered and could not acquire a second meaning.
In Cluett Peabody & Co. Inc. v. Arrow Apparels[3], The mark should be unique, according to the court. It must inform the buyer about the origin of the items. Phrases like “Best,” “Superior,” and so on did not distinguish the items. They couldn’t be trademarks since they were simply descriptive.
In Laxmikant V. Patel v. Chetanbhat Shah and Anr.[4], The plaintiff had been consistently using the “Mukta Jeewan Colour Lab” brand. The opposite party was ultimately forbidden from using a comparable mark. The word combination “has developed uniqueness and is consequently protected” according to the court, citing its earlier, ongoing, and extensive usage.
In M/S P.K. Overseas Pvt. Ltd.v. M/S KRBL Ltd[5], The Board accepted that the mark “Bemisal” had become recognisable due to its frequent use and high sales volume. Consequently, it is a legal trademark. As a result, this example demonstrates how we might utilise sales numbers to prove the reputation and goodwill of a brand.
Conclusion
To sum it up, we might say that while trademark registration may seem like a straightforward process, it is not. Being distinctive is required for registration. Plenty of people neglect the small details that need to be kept in mind while submitting a registration application. One must examine the originality of their markings with great care and attention. Once registered, the regulation will safeguard customers and suppliers from being duped by other firms with malicious intent.
List of References:
- “Trademark Distinctiveness – A Key Component of Intellectual Property Law & Brand Development”, Gleam law, available at: https://www.gleamlaw.com/cannabis-law-blog/business-law/trademark-distinctiveness-branding/#:~:text=The%20ability%20of%20a%20mark,many%20benefits%20associated%20with%20registration
- “Trademark Distinctiveness: Everything You Need to Know”, UP Counsel, available at: https://www.upcounsel.com/trademark-distinctiveness
- Purnima Dash, “CONCEPT OF DISTINCTIVENESS UNDER TRADEMARK LAW”, Law essential, 4 September 2021, available at: https://lawessential.com/blogs-ip/f/concept-of-distinctiveness-under-trademark-law
[1] AIR 1977 Cal. 413
[2] (1915) RPC 15
[3] 1998 (18) PTC 156 (BOM)
[4] AIR 2002 SC 275
[5] 2014 (57) PTC 129 (IPAB)