CONTENTS

• Marks that cannot be registered• Distinctiveness • The spectrum of distinctiveness

•Difference between TM, SM and ®

MARKS THAT CAN’T BE REGISTERED

• Generic terms

• Scandalous or immoral marks

• Deceptive terms

• Flags and official hallmarks

• Descriptive terms

• Similar

Distinctiveness

• This requirement is necessary to the nature of trademark

• A trademark may be eligible for registration, or registrable, if it performs the essential trademark function, and has distinctive character

The spectrum of distinctiveness

• Fanciful marks• Arbitrary marks• Suggestive marks• Descriptive marks• Generic marks

• Fanciful marks:- A fanciful / inherently distinctive trademark comprises an entirely invented or "fanciful" sign. For example, "Kodak" had no meaning before it was adopted and used as a trademark in relation to goods, whether photographic goods or otherwise.

• Arbitrary marks:- An arbitrary trademark is usually a common word which is used in a meaningless context (e.g. "Apple" for computers). Such marks consist of words or images which have some dictionary meaning before being adopted as trademarks, but which are used in connection with products or services unrelated to that dictionary meaning.

• Suggestive marks:- A suggestive trademark tends to indicate the nature, quality, or a characteristic of the products or services in relation to which it is used, but does not describe this characteristic, and requires imagination on the part of the consumer to identify the characteristic. Suggestive marks invoke the consumer’s perceptive imagination.

• Descriptive marks:- A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services

• Generic terms:- A generic term is the common name for the products or services in connection with which it is used, such as "salt" when used in connection with sodium chloride. A generic term is not capable of serving the essential trademark function of distinguishing the products or services of a business from the products or services of other businesses

Difference

UNCONVENTIONAL TRADE MARKS The following types of marks will come under the category: - Colour trade marks - Sound marks - Shape of goods, packaging, - Smell trade marks - Hologram

Visible signs Non-visible signs

sound (audio)

smell (olfactory)

words, letters, numerals

drawings, colors

Hologram

Motion

shape

Core requirements

procedural:graphical representation(register transparency)

substantial: distinctive characterNon functional

Graphical Representationthat Article 2 of the Directive must be interpreted as meaning that a

trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically, particularly by means of images,

lines or characters, and that the representation is

clear

precise

self-contained,

easily accessible,

intelligible

durable

objective.

COLOUR MARKS

10/04/2023 16

A single image delivers a lot of information in a very short time because we perceive an image all at once, whereas reading or hearing often takes significantly longer to process the same information.

Many of the most recognizable brands in the world rely on color as a key factor in their instant recognition.

FedEx's two different color schemes are the best examples of the "universal" symbolism of colors. Green communicates ground services; orange communicates the high energy and speed of air transportation.

Natural and Universal Color Symbolism for Brands

In order to constitute a trade mark, a colour or combination of colours must be capable of distinguishing the goods or services of one trader from those of other traders.

PROBLEMS IF SINGLE COLOURS ARE REGISTERED

SHADE CONFUSION

COLOUR DEPLETION

ANTI DISSECTION

SOUND MARKS

• Depends on aural perception of the listener which may be as fleeting as the sound itself.

• If a sound lingers in the mind of the listener and is so inherently different or distinctive that it causes the mind of the listener to be awakened when heard and

• the listener subsequently associates a source or event with that sound then the sound may be eligible for trademark.

Modes of graphical represntation

• Séquence of Musical notes • Sonogram• Audio tape recording• Onomatoepic description• Musical notation specifying

pitch and duration of sound• Electronic application with an

attached sound file.

Sound marks registered in India

• 3- note Yahoo Yodel

• ICICI’s Jingle

• Allianz’s sound mark

Sony to trademark ‘Why this kolaveri di’

New Delhi: After its ‘viral effect’ the Tamil song Kolaveri Di will soon achieve another feat. Music label Sony Music Entertainment is planning to trademark the song’s first line ‘Why this kolaveri di’. This essentially means that the ‘soup song’ popularised by actor Danush will become the first song in India to have its first line trademarked.

According to reports, Sony Music wants to trademark the phrase to use it as a brand and also to stop others from doing it.

As a marketing strategy, manufacturers of goods introduce smells of scents to make the use of the products more pleasant or attractive. These goods could include cleaning preparations, cosmetics and fabric softeners. Even less obvious goods are now manufactured with particular scents to add to the product’s appeal, for example, magazines, pens, paper and erasers

OLFACTORY MARKS are potentially registrable, as they can indicate commercial origin of goods or services. But in practice it is difficult to fulfil the requirements of graphical representation.

examples

• Smell of rose for tyres• Smell of freshly cut grass for

Tennis balls• The odour of beer for dart flights • Smell of plumeria blossoms for

yarn• Smell of vanilla for office files• Cherry scent for synthetic

lubricants

Shape as a trademark:the trade mark shall not be registered if it consists exclusively of – a) the shape of goods which results from the nature of goods themselves; or b) the shape of goods which is necessary to obtain a technical result ; or c) the shape of goods, which gives substantial value to the goods

Shapes — EU — Examples

Coca-Cola bottle

Bang & Olufsen loudspeaker

Philips three-headed rotary shaver

Dishwasher tablet

“You’d Better Shape Up,” Says Ukraine’s Highest Commercial Court, in Invalidating Ferrero’s Trademark Registration for Product Configuration

Motion TrademarksMoving images in the form of a film clip, video, animation, logos etc can alsoqualify for trademarks in some countries. Motion trademarks may also be knownas animated marks, moving marks, or movement marks.

A static image of the Columbia Motion Trademark

The arrangement and stages of opening of the doors of aLamborghini

Indian trademark law• Indian trademark law statutorily protects trademarks as

per the Trademark Act, 1999.• The law of trademark deals with the mechanism of

registration, protection of trademark and prevention of fraudulent trademark.

• The law also provides for the rights acquired by registration of trademark, modes of transfer and assignment of the rights, nature of infringements, penalties for such infringement and remedies available to the owner in case of such infringement.

History of Indian trademark law

• The first statutory law related to trademark in India was the Trade Marks Act, 1940.

• In 1958, the Trade and Merchandise Marks Act, 1958 was enacted which consolidated the provisions related to trademarks contained in other statutes like, the Indian Penal Code, Criminal Procedure Code and the Sea Customs Act.

• The Trade and Merchandise Marks Act, 1958 was repealed by the Trade Marks Act, 1999 and is the current governing law related to registered trademarks

Trademark Act 1999

• According to the Trade Marks Act, 1999, “trade mark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours.

• A mark can include a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any such combinations.

Governing Body

• Trademarks are administered by the Controller General of Patents, Designs and Trade Marks.

• Which is a government agency which reports to the Department of Industrial Policy and Promotion (DIPP).

• It is responsible for intellectual property rights relating to patents, designs, trademarks, and Geographical indication of goods and oversees the initiative relating to their promotion and protection.

• Whole of this structure comes under the Ministry of Commerce and Industry.

Learnings

• Trademarks establish goodwill between the source of a product or service and the consumer.

• They uniquely associate a product or service with a particular source, even if that source is unknown to the consumer.

• A well-chosen and well-publicized trademark often has value far beyond the physical assets of a company so it should be protected properly.