– by expert Intellectual Property Rights (IPR) & Trademark Lawyers in Chandigarh

A mark, be it for a trade (relating to goods) or for a service (relating to service) can be any word, logo, symbol, name, device, combination (any), being used by any person or a business or intended to be used by any person or business for any trade or service. The main role a trademark is two-fold: at first, it helps in differentiating goods and services of one undertaking with that of the other and second it helps in determining the source of the goods or services. Therefore, having a good trademark either acts as a brand identifier or becomes a brand name in itself. The basic requirement for a mark to be registered is that it should have the capability to distinguish the goods of the applicants from that of the other.

Classification of Trademark

Generic marks:

They are a common name being used for a product or service and generally, such names do not acquire protection because everyone has a right to use the generic words for their products. For examples “shoes” or “computers” etc.

Descriptive marks:

These marks are general in nature describing the product or service. Unless a descriptive mark has some secondary meaning attached, it is not possible to register it as a trademark. Words like ‘high’ and ‘cold’ are of a descriptive nature.

Suggestive marks:

Such marks acquire distinctive nature by suggesting or referring but not describing and requiring the consumer to use their imagination in order to connect with the product. For example, Android, Microsoft etc. Such trademarks are weaker than arbitrary or fanciful trademarks. Words or phrases that are commonly used “suggest” the product. For example, “At A Glance” for calendars.

Arbitrary marks:

They are general names used to describe a product which has no connection to the dictionary meaning used. Such marks comprise of ordinary words, symbols, used in such a manner that they do not define or advise for the product or service with which they are associated. There is a distinct relation between the name and the product. “. For example, ‘Apple’ is an arbitrary mark used in sync with technology and its products and Black & White” used for scotch whiskey.

Fanciful marks:

They are random marks consisting of a random collection of letters creating a word. Such trademarks consist of “invented” words or terminology that doesn’t have a dictionary meaning. The word attains meaning only after it has been associated with the company’s product or service. If the word is new, then in order to associate the mark with the product, the company needs to make the public understand the link between the product and the new word. For example, Kodak (for camera and films), Google (search engine)

The only way to attain trademark is through its distinctiveness. Such distinctness differentiates the goodwill of a business from that of the competitors and helps the consumer getting attached to the brand. Generic marks do not attain trademark protection at all whereas, descriptive marks provide less protection, as such marks can be used by anyone having same goods or providing same services, therefore, for a descriptive mark to attain a trademark protection, should either attain secondary meaning or get closely associated with the customers. Acquiring secondary meaning means that the mark is denoted via business and not by product or service itself. A descriptive mark can acquire distinctiveness even when the public starts to associate the mark with the business as the source of specific good/service. Under Section 9 (1) (b) of Indian Trade Marks Act, 1999 descriptive trademarks are prohibited from being registered, an exception being the distinctive nature or secondary meaning acquired by the mark by virtue of long-standing use and the resulting recognition. Examples like ‘AIRTEL’, “AMERICAN AIRLINES’ are descriptive but registered due to acquired distinctiveness.

Evidences that court may refer to while determining the secondary meaning is either by direct means from the customers or via indirect means like- market awareness and market presence of the mark with respect to the brand in question or advertisement carried out by the business or exclusive use of the mark and the duration it’s being used for. Over a period of time after uninterrupted and extensive usage of the mark, it acquires the status of a ‘well-known’ mark under Section 2 (1) (zg) of the Indian Trademark Act, 2000. Example, ‘WHIRLPOOL’, ‘DUNHILL’. Having an inventive or a creative trademark is stronger than a communicative and sensitive trademark and thus gives a strong support while interpreting a mark in court.

Descriptive trademark as business name

A descriptive mark recognizes one or more features of a product or a service and then only assists by describing that product or service. For instance, a term like “best” quality describes the product or the service. The word which has descriptive quality should only describe one major feature of that product. The issue with such marks:

They are very abstractly weak and hard to enforce having unprotectable nature from competitors. It is very expensive to defend such marks s they are weak. Other marks (arbitrary, suggestive, fanciful marks) are unique when created and there is no confusion in recognizing product or services when marketed. It will be difficult for the competitors or common people to use the word or phrase in relation to their product. Legally no one will able to use the word and this would lead to a lot of unwanted infringement suits every day.

For instance, if a person gets the word “trademark” registered then trademark attorneys would no longer be able to talk and work on trademark business anymore.

The legal department of a company is sometimes in conflict with the marketing department as a marketer’s target at selling a product by using the descriptive nature of that product and hence using a descriptive trademark. On the other hand, the legal department views having a strong trademark, identifying the source of the good or service and thus not supporting the use of a descriptive mark for a long run. The company chooses descriptive words where possible so that the consumer connects well with the product and the mark, but, money saved on the front-end in promotion fallouts from the back-end costs of litigations. Descriptive elements can be added to a strong trademark like:

Taglines- short phrases briefly describing the product so located on marketing material educating consumers.

Slogans- they involve suggestive traits by being less descriptive and can be trademarked themselves.

logo-describing product piece

Importance of picking a strong trademark

Selecting a good and a strong trademark is of great importance. Legally speaking, if a product or a service has a mark which is completely random and has no direct relation, such marks are of strongest nature and hence, it’s easy to give them trademark protection. For instance, “Google” for a search engine, “Bose” for audio units and so on. When a business is new and enters a market, then having a mark that best represents that business is not easy.

As another important step, when once you select a mark for your business, you also need to identify a class of goods or services, the trademark will be used in. It is not possible to register that mark in all classes of goods and services but the significant point is that although a trademark is descriptive to one industry it may not be descriptive to another industry. For instance, registering ‘gas station’ as a trademark for food joint is possible as it is not descriptive of the service provided rather than getting it trademarked for fuelling stations for vehicles. What generally happens is that marketing people look for marks that are so descriptive in nature with a hope that probable customers will easily and immediately recognize the product or the service that is being offered but, this approach is not strong for an unregistered trademark. Therefore, it is advisable to consider the terms and conditions when it comes to long-term brand management scenario because a quick pick mark having no proper protection can be dangerous for a company. From a legal point of view, having either a fanciful mark or an arbitrary mark is best as they have extremely strong distinctive feature and the law will guard them against any similar encroachment.

In the case of ITC Limited v. Nestle India Limited, the court observed that no protection can be claimed if the word is descriptive in nature but if shows some secondary meaning and distinctiveness then protection can be granted.

CONCLUSION

Having a descriptive mark means describing the product or the service and if someone obtains a trademark over it then he needs to signify that it is over the secondary meaning otherwise anyone can use the mark for their own business and one loses the protection of a trademark. Monopoly right that is acquired after the registration of a trademark is not for the language, hence others cannot be excluded from impartially describing whatever they sell or provide service for. Therefore, from a legal angle having a descriptive trademark should not be preferred for a upcoming business.