What Kind Of Trade Mark Gives You Best Protection?

Trademark

A Trademark in relation to goods or services means a mark, design, or expression which represents a product or service of a source from the ones of other sources and is legally registered under The Trade Marks Act, 1999.

Kinds of Trademarks

  • Coined Marks: These are the marks that are made innovatively by mixing words together. These marks do not have any meaning; they only serve as the marks that are registered for the product or service. In the beginning it is tough for the public to remember such names but as the days pass by this kind of marks gain a lot of good will which makes them the strongest marks of all kinds. These marks have the largest scope of protection when compared to others. Ex: XEROX, EXXON, KODAK etc.
  • Arbitrary Marks: These marks consists a word that has no relation with the product or service that it is registered for. Even this kind of marks gives a large scope of protection to the mark. Ex: LOTUS Software, Apple iPhone etc.
  • Suggestive Marks: This kind of marks suggests to the public the quality or nature of the product or service it is registered for. These marks should be avoided a little, so that no one can pose a threat to the mark as these marks are not as strong as the coined or arbitrary marks because these are general terms and can be used by any one. However, these marks do not describe its product or services, but merely suggests the same. Ex: MICROSOFT, SWEET HEARTS etc.
  • Descriptive Marks: These marks are similar to suggestive marks but unlike them these marks directly indicate the product or service. It merely describes the quality or any other characteristics of the product and not more than that. It is difficult to stop others from using or registering this kind of marks. The scope of protection to such kind of marks is also very less and any one can easily misuse such marks and in India it is also barred under section 9 of The Trade Marks Act, 1999. But when these marks gain a secondary meaning i.e. the mark is closely connected in people’s mind to the product or service it is representing then they gets a well-known status which gives more scope of protection. Ex: SCOOPS Ice Cream.
  • Surnames: These are the marks that generally do not get registered because there would be many people with the same surname and people do get confused. But if the surname gets a secondary meaning due its usage over the years it can get registered as well as get a well-known status. Best example for this would be MCDONALDS.
  • Generic Terms: These are the general terms for a particular category of products or services like software. There could be many manufacturers of software with many trademarks but the end product they produce is software itself. The scope of protection for such kind of marks is very low, it is almost equal to nil and in India it is also barred under section 9 and 11 of The Trade Marks Act, 1999. Ex: SOFTWARE, ICE CREAM, CHOCOLATE etc.
  • Deceptive Mark: Any mark which is identical or deceptively similar to other existing mark, would not be granted Trade mark registration, since the objective of the Trade Mark Act is to avoid confusion among public regarding the products and services and its sources. Secondly, this also protects the goodwill of the earlier existing Trade mark.

The best form of Trade mark is the one which excels in distinguishing its products from others. Intellectual Property Rights protects the creation of minds, hence, Trademarks with utmost creativity and originality, has the best protection against others. Thus, invented marks are always advised for registration.

 

Author: M. Sai Krupa, Intern at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at swapnils@khuranaandkhurana.com.

References:

[1] THE TRADE MARKS ACT, 1999

[2]http://www.inta.org/TrademarkBasics/FactSheets/Pages/ConsiderationsSelectingTrademarkFactSheet.aspx

[3] https://www.bitlaw.com/trademark/degrees.html

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