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Choosing the Right Trademark- How Important is it Anyway?
First Publication Date: 8th January 2010
How important is it to choose the right trademark and how to choose the apt mark?
With more and more courts and decisions focusing on the strength of the mark it definitely becomes quintessential to choose and apply for the right trademark. We don’t have to search hard to look for such illustrations where the strength of the mark in some way decided the fate of the case. Fenil in his post titled “Could exclusivity be claimed over the word Imperial for alcohols” very aptly covered the case where it was held that no exclusivity can be claimed over the mark imperial for alcohols as it is used by a lot of alcohol manufactures and it conveys a laudatory meaning of grandeur.
Today brand development has become an exercise costing millions to entities and suddenly if they realize that they cannot use a particular mark anymore or they are not the exclusive users of a particular trademark then the entire money and effort go in vain.
This brings us to the second part of the question we began with i.e. how to choose a right mark for any product or service. If we revisit the Indian Trademark Act we will find that the definition of a mark is a very broad one that includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colors etc [section 2 (1) (m) Trade Marks Act, 1999]. The only restriction visible in the Trade Marks Act 1999 is mentioned under section 9 (parallel to section 3 of the UK Trade Mark Act 1994) which among other specific restrictions provides that a mark should not be devoid of distinctive character and should not describe the goods and services on which it is applied. Apart from the explanation of “not capable of distinguishing the goods or services of one person from those of another person” we do not get any particular help from the Indian Trade Mark Act about what actually is meant by the term distinctive. To draw some parallel on the issue of what constitutes a distinctive mark I turn to the US Trademark Law.
The legendary case of Abercrombie & Fitch Co. v. Hunting World Inc. formulated a classification (now popularly known as the Abercrombie & Fitch hierarchy) of marks in the following five categories in order of increasing distinctiveness:
1 .Generic- Due to excessive popularity/ use or other reasons the mark is understood to be referring to the genus of which that particular product is a species to which the mark is applied. Such marks are understood to have lost all distinctiveness and cannot be protected as a trademark. e.g. Xerox for photocopy.
2. Descriptive- The mark instantly conveys information about quality, quantity, condition etc of the particular goods/services the mark is applied to. These marks generally get protection only when acquired distinctiveness is proved. e.g. Cafe Coffee Day.
3. Suggestive- Marks to which, when thought process or imagination is applied may lead to the nature of goods. Such marks are automatically eligible for trademark protection but are understood to have a comparatively lower degree of distinctiveness. e.g. 7-11 for a store that stays open from 7 a.m. to 11 p.m.
4. Arbitrary- When common words are applied to goods or services in an unfamiliar way i.e. there is no connection between the mark and the goods or services it is applied to. Such marks are considered to have a very high degree of distinctiveness. e.g. apple for computers.
5. Fanciful- Trademarks that are invented/coined words and do not have any dictionary meaning then they are called as fanciful marks. Such marks are considered to have the highest degree of distinctiveness. e.g. Kodak.
The take away from the aforementioned discussion is that a mark should definitely have a feel good that not only is easy to memorize and catchy but simultaneously more attention should be paid to certain other legal principles of distinctiveness while choosing a new mark.