Focus keyword- Registrable Trademarks, Non-Registrable Trademarks

Additional keyword- Registrable and not registrable trademarks in India, distinctive, example of registrable trademarks, an example of non-registrable trademarks.

A Trademark is a form of Intellectual Property which distinguishes a good or service. It may consist of a sign, symbol, shape, colour, name or any other unique and distinct identification mark that would make a good or service easily differentiable from other commodities. A Trademark provides legal protection from infringement and prevents others from copying the same or creating deceptively similar marks. Trademarks can be owned by an individual, a business organisation or any other legal entity.

Trademarks Act, 1999 

The Trade Marks Act, 1999[i], provides the rules and regulations relating to the registration of Trademarks and has constituted the Trade Mark Registry as the designated authority. The aim of this Act is to provide a comprehensive mechanism to register Trademarks and protect them from unscrupulous/illegitimate use. This Act also delineates what marks may be registered and sets out a comprehensive list of criteria to be fulfilled. 

What marks are registrable?

Marks that can be observed easily and are unique/distinct from another person’s goods or services are registrable. These marks must have a distinguishable characteristic that makes it unique and different from a similar line of good or service. According to the TRIPS Agreement[ii], of which India is a signatory, a Trademark can be registered if it contains any sign or signs that make the goods or services of an undertaking distinguishable from that of another’s undertaking.

To sum up the requirements under the Trademarks Act, 1999, the following essentials are required to be fulfilled:

1. The mark must be distinct and must not be descriptive with respect to the goods or services.
2. The mark must not be similar to another mark, which has already been registered or is pending for registration.
3. The mark must not be prohibited by the Trade Marks Act.

Examples of Registrable Trademarks:

1. Names which are unique and not similar to an already existing mark.
2. Newly coined or invented words that neither describe the character nor the quality of the goods or services.
3. Numerals or letters or a combination of both.
4. Devices.
5. Use of unique symbols and signatures can be registered as a mark.
6. A combination of colours, giving rise to a unique colour.
7. 3D marks.
8. Distinct shapes of goods that make them stand out.
9. Specific sound marks that can be shown in a system or can be represented graphically.

Process for registration of Trademark [iii] 

In order to register a Trademark, the following process must be followed:

1. Filing of Application: As per the Rules and Act given under the Trade Marks Registry, an application for a Trademark registration may be filed.
2. Application Number Allotment: Once the application is done, the Registry shall allot a unique number for that application.
3. Data Entry: Once the Registry receives the application, all relevant data given by the applicant shall be entered into the system for further scanning and examination.
4. Scanning (Vienna Codification): After the data has been entered, it shall be scanned by the system to check for already existing Trademarks of the same or similar nature and if the mark contains unique and distinct features to qualify for registration. This process was codified at the Vienna Agreement, 1973. The Registry will apply the Vienna Classification.
5. Examination Report: The Registry shall despatch the examination report following the scanning of the mark.
6. Application Accepted: If the Examination Report has accepted the Trademark,
7. Journal Publication: The mark shall be published in the Trademark Journal to inform the public of registration of such mark.
8. Awaiting Opposition: Once the trademark has been published in the Journal, the public is given an opportunity to oppose such a mark, in case of any violation.
9. If there is no opposition within 90 days from the publication of the Journal, the Trademark shall qualify for Registration. Subsequently, the Trademark Manuscript and the Trademark Registration Certificate shall be prepared. After issuing the Certificate, the applicant becomes the rightful owner of that Trademark and is granted exclusive use of that mark.
10. If any person in the public opposes such a mark, the Trademark Hearing Officer shall fix a hearing. The applicant and the opposing party shall have the opportunity to appear for such hearing to justify the registration or rejection of the mark with sufficient evidence. Following this, the Hearing Officer shall deliver the judgment on merit.
11. If the opposition is rejected, the application shall proceed for registration. If the opposition is accepted and the application is rejected, the mark may either go for a review or the aggrieved party may approach the Intellectual Property Appellate Board.

Instances where the registry has objected the registration in the examination report 

If the Examination Report has objected to the Trademark, the Trademark Hearing Officer shall adjourn a hearing, giving an opportunity to the applicant to address the objection. If the Officer is satisfied with the justification, the mark may be accepted for registration. If the Officer rejects such justification, the aggrieved party may approach the Intellectual Property Appellate Board.

Once a trademark has been registered, the “®” symbol can be used next to the mark. Following this, post-registration changes can be made to the marks. The registration of a Trademark has a duration of 10 years. Once this period expires, the owner of the trademark has the right to renew the mark.

However, if a person does not register the mark and allows another person to use such mark, the other person may gain the right to use the mark and the person giving such right may lose his right to seek remedial action for the infringement.

What marks are not registrable? 

A Non-Registrable Trademark is one which has failed to distinguish itself from other goods or services or fails to meet any other requirements provided in the Act/Rules. The mark does not qualify for registration as a Trademark as it is not different enough from other existing marks. Such marks are also those which may likely cause confusion or may deceive potential consumers.

Examples of Non-Registrable Trademarks:

1. Marks which are not allowed under the Trade Marks Act.
2. Marks which mislead or confuse the public. For example, AQUAFENA and AQUAFINA. Aquafina has been a popular brand for bottled drinking water in the market for a long time. When a company in the name of ‘Aquafina’ is brought into the market, people tend to get misled because of the very minute difference in the mark intended to be registered. 
3. Marks whose subject matter may hurt the religious sentiments of the citizens. For example, JESUS JEANS for clothing. Attributing Jesus to a line of clothing may hurt the religious beliefs of Christians as they believe him to be their God. 
4. Marks that contain obscene or vulgar subject matter. For example, W.B. WIFE BEATER for clothing. Such a brand will normalise abusive behaviour in households which can be troublesome for brands with such names. 
5. Marks which have been prohibited by the Emblems and Names of Prevention of Improper Use Act, 1950. For example, RED CROSS, ASHOK CHAKRA, etc. These are considered to be sacred emblems which are attributed to national sentiments. 
6. Marks of the goods whose shapes directly associated with the characteristic of the product. For example, SHARP for televisions. 
7. Marks which are similar in character with another mark. For example, PICNIC and PICNIK for chocolates. Similar to the example used above, very often consumers might get confused between these two brands due to very similar names of both the brands. 
8. A geographical location cannot be registered as a mark. For example, SCOTCHLITE.
9. Marks that relate to smell cannot be registered.

The following are the main reasons for the objection of a Trademark[iv]:

1. Incorrect Trademark Form: In case the applicant files an application for registration through a wrong form, the Trademark Examiner shall raise such objection. The applicant may correct it by filing a request through Form TM-16.
2. Incorrect Trademark Applicant Name: In case the applicant name has been filed incorrectly, the Examiner can raise an objection against this. The same can be corrected by filing a request through Form TM-16.
3. Failure to File Trademark Form TM-48: Form TM-48 is required to be filed when an application is done through a Trademark Agent. Where such a form has not been filed, the Examiner may raise an objection. The applicant shall subsequently file a request by Form TM-16 to correct the same.
4. Incorrect Address on Trademark Application: Where the Examiner notices that the address mentioned in the application is incorrect, he may raise an objection. It can be corrected by filing a request under Form TM-16.
5. Vague Specification of Goods or Services: If the nature and character of the goods or services is vague and does not include all necessary information about the goods or services, the Examiner can object to the application. The applicant can file a request to correct the same through Form TM-16. 
6. Same or Similar Trademark Exists: As per Section 11 of the Trade Marks Act, a trademark can be registered if a similar or same trademark already exists with regards to the description of the goods or services. This is because such similarity may confuse the public or potential consumers. The Examiner can object to such marks. In response, the applicant may provide sufficient evidence to prove that the mark cited by him is distinct from the already existing marks.
7. Trademark Lacks Distinctive Features: Where the Examiner is satisfied that the mark cannot be distinguished from an existing Trademark, he may raise an objection under absolute grounds for refusal. To overcome this, the applicant can provide evidence to prove the distinct nature of his mark.
8. Trademark is Deceptive: If a mark is deceptive in its nature, quality or feature and is likely to deceive the public, the Examiner may raise an objection. The applicant may subsequently file a request under Form TM-16.

The following tests can be used to determine the similarity of different Trademarks:

1. Determining the nature of the marks.

2. Determining the degree of resemblance between the marks.

3. Determining the nature and features of the goods or services.

4. Determining the class of potential consumers.

5. Determining the distribution channel.

If a particular mark is not similar to another mark as per the above-mentioned tests, the mark may be registered as per the Trade Mark Act.

Examples of marks which have been registered

1. Nestle – Name Marks

2. FedEx – Service Marks

3. Apple – Logos and Symbols

4. Coca Cola – Shape of Goods

5. FSSAI – Certification Mark

An important aspect of Trademarks is to understand the difference between the ™ symbol and the ® symbol. The ™ symbol merely signifies that the particular good or service originated from a company or person or any legal entity and it is used to indicate that the mark is an identifier for the source of that good or service. The symbol can be used even without registration of the mark.

The ® symbol, on the other hand, signifies that the mark belongs to the person or company using it and it protects them from any form of infringement of that mark. It can only be used when the mark has been registered under the Trade Marks Act.

In conclusion, a Trademark may originate from any source, such as a person, a company or any legal entity. But it is important to identify the original owner and rightful user of that mark. Registration of a Trademark is legal protection guaranteed to Trademark owners for protection against infringement and prevention of fraudulent use of the mark. It is important for owners of marks to ensure that their mark shall qualify for registration. Non-registration may not be compulsory, but it may involve hindrances such as infringement and unfair usage. It is important for every owner to rightfully gain what is theirs.

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[i] http://ipindia.nic.in/about-us-tm.htm

[ii] https://www.indiafilings.com/learn/registrable-trademarks/

[iii] http://www.ipindia.nic.in/writereaddata/images/pdf/trade-marks-registration-in-india.pdf

[iv] https://www.indiafilings.com/learn/top-reasons-for-trademark-objection/