Property in Trademark and registerable & non-registerable marks

A trademark is a sign capable of distinguishing the goods or services of one enterprise from
those of other enterprises. Trademarks are protected by Intellectual Property Rights (IPR). In
India, the law relating to trade marks is mainly governed by The Trade Marks Act, 1999 and
it provides the mechanism for trademarks registration and once it is registered, it grants status
of property to the trademarks. The term ‘trademark’ has been defined under Section 2(zb) of
the Trade Marks Act, 1999. According to this Section, the term ‘trademark’ means a
graphical representation of a mark, symbol or sign made in a manner with an objective to
distinguish or differentiate the goods or services of one person from another. It serves as a
badge of origin exclusively identifying a particular business as a source of goods or services.
According to the International Trademark Association (INTA), a registered trademark is “any
word, name, symbol or device that identifies and distinguishes the source of the goods of one
party from those of others.” The word “trademark” can refer to both trademarks and service
marks. A trademark is used for goods, while a service mark is used for services.
A trademark:
 Identifies the source of your goods or services.
 Provides legal protection for your brand.
 Helps you guard against counterfeiting and fraud.

A common misconception is that having a trademark means you legally own a particular
word or phrase and can prevent others from using it. However, you don’t have rights to the
word or phrase in general, only to how that word or phrase is used with your specific goods
or services.

For example, let's say you use a logo as a trademark for your small woodworking business to
identify and distinguish your goods or services from others in the woodworking field. This
doesn't mean you can stop others from using a similar logo for non-woodworking related
goods or services.

In India, trademarks can take various forms, each serving as a distinctive identifier for goods
or services. Here are the different types of trademarks recognized in India:

Word Marks
Word marks consist of words, letters, numerals, or combinations of these elements without
artistic representation. It offers flexibility in design and font; well-known examples include
brands like Microsoft, Tata, KFC, and IBM.

Device Marks
Device marks include labels, stickers, logos, or any geometrical figure, with or without word
elements. These marks may also incorporate colors, which must be specified during
registration to claim protection. A well-known example of a device mark is the iconic Apple
logo.

Service mark
It cannot be seen in the case of goods but it represents the service offered by a person or a
company. A service mark is a mechanism available to protect marks used in the service
industry. The Service marks are represented by the symbol SM and not TM.
For example, McDonald’s which has a service mark for restaurant services it provides.
Service mark cannot be easily distinguished from other kinds of trademarks and this is the
reason why many companies prefer having both.

Collective marks
They are used by a group of companies or an association or public institution or cooperative
to inform the general public about a specific feature of the product for which the mark is
used. “CA” which denotes the members of Institute of Chartered Accountants is a prominent
example.

Three-Dimensional Trademarks
This category includes the shapes of goods or their packaging, which must be distinct from
competitors’ shapes. The shape itself serves as a trademark for consumers to recognize the
origin of the goods. Eg: Dairy Milk (Valentine’s Limited Edition, Toblerone)

Unconventional trademarks
They are those trademarks which are recognized for their distinctive feature such as color
(Combinations of colors can be registered as trademarks to represent goods and services,
provided the combination is distinctive enough for the purchasing public to identify the
product or brand), sound (they are represented in MP3 format with specific sound notations.
The Yahoo yodel was the first Sound Mark that was registered in India followed by Nokia
tune), smell (for example when the smell of a perfume is distinctive and cannot be mistaken
for an associated product, such can be registered as a smell mark) and shape (Trademarks can
be registered for the shape of goods if the shape is distinctive and not purely functional).

The World Intellectual Property Organization (WIPO) has established the Nice Classification
(NCL), an international system that categorizes goods and services into 45 classes for
trademark registration. Each class represents a specific category of goods or services. Among
the 45 trademark classes, 34 are reserved for products, while the remaining classes (11
classes) are designated for services.
Chapter III of the Trade Marks Act, 1999 deals with the procedure and time period or
duration of registration. The time period of registration for a trademark is ten years in India
and is subject to renewal on expiration of such time period of 10 years. The entire process of
registration in India is governed by the Trade Mark Act 1999.
The procedure for registration is complex, costly and takes time.
Procedure to register a trademark
The proprietor interested in registering his trademark must make an application as prescribed
under Section 18 of the Act. Once the application is filed, it is examined by the Registrar
carefully to find out if there is any discrepancy (diskrapancy). The acceptance must be
absolute and unconditional. After the application is accepted by the Registrar, the application
has to be advertised in the Trademark Journal which is published weekly.
Trademark Journal contains all the trademarks those are accepted by the Registrar. Once it is
published in the Journal, general public have an opportunity to object such registration if it is
believed that such registration can be a cause of damage to him. Any third party may object
within three months from the date of the advertisement of the application or within such
further period not exceeding one month, as provided in the Act may object such registration
by giving a notice writing to the Registrar in a prescribed manner. The Registrar is also
empowered to withdraw the application under section 19 of the Act in case of any defects or
errors.
When no objection or opposition is received by the Registrar, the next step has to be the
preparation and issuance of the trademark certificate to the applicant and once the certificate
is issued, the trademark is considered to be registered trademark under Section 23 of the Act
and then the ® symbol can then be placed next to the Trade Mark logo or the ™ symbol.
Registrable Marks
Registrable marks are those marks that can be represented graphically and marks that are
capable of distinguishing itself from other person’s goods and services. Registrable marks
according to the TRIPS agreement states that “any sign, or any combination of signs, capable
of distinguishing the goods or services of one undertaking from those of other undertakings,
shall be capable of constituting a trademark”.
A trademark registration application can be filed for a registrable mark.
Examples of Registrable Marks
The following are examples of registrable marks:
 A name of a product that is not unusual for a trade to consider it as a mark. This
includes a personal name or a surname of an applicant or predecessor in business or a
company name or the signature of the person. The appropriate mark can be
represented in a special or in a particular manner in which the proprietor desires to do.
In India, various celebrities have managed to obtain trademark registration for their names, in
order to protect their personality rights from being violated, even though personality rights
are not defined in the Trademark Act, 1999. However, Indian Courts from time to time have
recognized the importance of Personality Rights and have recognized the reputation/
goodwill attached to a celebrity names. Recently the Hon’ble Delhi High Court in the case of
Anil Kapoor v. Simply Life India & Ors., highlighted the issues surrounding personality
rights and restrained the defendant from the unauthorized use of film actor Anil Kapoor’s
name, likeness, voice, and any aspect of his persona.
 The invented word or words of a mark should neither be in a direct descriptive of the
character nor be the quality of the goods and services.
 A mark can be in a combination of letters or numbers.
 The mark can use fancy devices or symbols.
 Symbols can be represented as monograms.
 Combination of multiple colors or a particular color can be combined with a word or
device.
 Considering the shapes of the goods or the specific way in which the goods are
packaged.
 Those marks forming a 3-dimensional sign.
  Sound marks that can be represented in a standard system or can be described in
words for its graphical representation.
Non-Registrable Marks
The marks that are not distinctive enough from other marks and which cannot be registered as
a trademark are called Non-Registrable marks. This means that the mark has failed to
differentiate itself from other goods and services. Hence, trademark registration cannot be
obtained for non-registrable marks.
Examples of Non-Registrable Marks
 Marks that cannot be accepted according to the law of Trademark Act.
 Marks that mislead or tends to cause confusion to the public.
 Marks consist of subject matter that hurt the religious senses of any class or sections
of the Indian citizens.
 Marks that contain improper or vulgar subject matter.
 Marks that are banned under the Emblems and Names of Prevention of Improper Use
Act, 1950.
 Marks of the goods whose shapes are directly obtained from the nature of the goods.
 Marks of the goods whose shapes are important to acquire a technical result.
 Marks that are similar in identity to another good or product.

Case Laws
1. Abu Dhabi Global Market vs The Registrar Of Trademarks (August 8, 2023)
(The trade mark has to be distinctive)
The application for registration was rejected on one of the grounds that the mark was as a
whole non-distinctive as it was neither coined nor invented.
The question that arises is whether inventiveness of a trade mark is a criterion of distinctive
character?
The Appellate Court observed that it does find any requirement for a mark to be “coined” or
“inventive” for it to be eligible for registration. It was held that “Distinctiveness is,
undoubtedly, a pre-requisite for registration of a mark, but inventiveness is not”. The Delhi
High Court thereby set aside the Assistant Registrar’s order rejecting the trademark
application and remanded it to the office of the Registrar of Trade Marks for advertisement
and further proceedings.
2. Lal Babu Priyadarshi vs Amritpal Singh (2006)
Lal Babu Priyadarshi, trading under the name M/s. Om Perfumery made an application to the
Registrar of Trade Marks to register trademark by the name ‘RAMAYAN’ (“Impugned
Mark”) along with the image of a crown. The impugned mark (to cause people to doubt
someone's character, qualities, or reputation by criticizing them) was to be registered in
respect of incense sticks and perfumeries. The said application was opposed by another trader
Amritpal Singh trading under the name M/s. Badshah Industries, claiming that the Impugned
Mark, is name of a religious book, and hence it could not become the subject matter of
monopoly for an individual.
The Assistant Registrar of Trademarks dismissed the opposition. Aggrieved by the same,
Amritpal preferred an appeal before Intellectual Property Appellate Board which set aside the
order of registrar. Aggrieved by this order, Lal Babu approached the SC by Special Leave
Petition.
Amritpal Singh contended that the Impugned Mark was devoid of any distinctive character as
it was not capable of distinguishing the product of one person from that of another. He also
contended that the Impugned Mark was being used by more than 20 traders in the city itself
and hence it had become public juris and common in trade.
The Court relied on the Amritpal Singh’s contention that the Impugned Mark did not have
any distinctive character as it was being used by more than 20 traders in the city. Pursuant to
this case, the Court has held that the names of holy books such as Quran, Bible, Guru Granth
Sahib, Ramayan etc. cannot be registered as trademarks.

3. Koninklijke Philips Electronics NV v. Remington Consumer Products Ltd

Philips was claiming a shape mark over its shaver with three rotational shavers in an
equilateral triangle and tried to prevent the Defendant from manufacturing a shaver with the
three shavers in an equilateral triangle. It was held that Philips could not protect its shaver as
a shape mark as it was a shape, which was important to get a specialized technical result.
Thus, it was held that the Defendant had not encroached upon the trade mark of Philips, since
it was not a legitimate trade mark to begin with.
4. Dolma Tsering v. Mohd. Akram Khan and Anr
Ms. Dolma Tsering has been engaged in the business of selling the Tibetan delicacy, ‘Momo’
in India since 1994. The petitioner was the registered owner of the trademark “DOLMA
AUNTY MOMOS." The petitioner filed against the respondent’s trademark, which was not
only similar to that of the petitioner but also used the petitioner’s name “DOLMA." The
petitioner called for the cancellation of the respondent’s trademark on the grounds of Section-
11(1), 11(2) (Relative Grounds of Refusal) and Section 47 of the Trademarks Act. The
Hon’ble Delhi High Court directed the Trademark Registry to remove and cancel the
respondent’s trademark and update the same on its Register and website within four weeks.
In brief, it is always better to register a trademark even if it is not mandatory in India and
many other countries. Registration of a trademark has several incentives. Registration guards
it from any action of infringement which somewhat gives relief to the registered trademark
holders. The registered trademark holders can file a legal suit for infringement and since the
trademark is registered, the burden of proof does not lie upon the holder. Registered
trademarked products create a better brand image in the market and get more preference over
the unregistered trademarks by the consumers. And lastly but most importantly registration
also plays a vital role in brand development which is extremely crucial for the growth of trade
and commerce.