WHAT GIVES STRENGTH TO THE TRADEMARK?

With the booming businesses, and the revolutionized e-commerce, the entrepreneurs are seeking distinct recognition to their respective trade by devising and adopting a unique Trademark or Tradename, meant to be easily identifiable by public, at large. It has become more of a clarion call resonating with everyone who wants to offer goods and services in the market and strives to leave a mark with their trademarks. Since industrial revolution, Trademarks have been in existence and in use by the proprietors or business houses or establishments to concur with the course of their businesses and to amass the reputation and goodwill for the goods offered or services rendered by them. It is with the notion to be in the market and to be easily identified or recognized by the public, there have been numerous marks, brands, businesses who have been coming up with their respective marks along with their wide reputation and goodwill, meeting the standards and gathering the desirability of the purchasing public and definitely, the protection under the trademark laws as registered proprietor.

These marks range from invented, coined to the descriptive ones, of different strengths looking for protection and registration. From time to time, the question over strength of the trademark or what qualify a mark to be distinctive arises and the answers vary with the facts and circumstances that come before the IP Registry or the Courts. The question of registerabilty soon hits the Applicant, when the mark chosen to be registered doesn’t fit the cap of the provisions of the Section 9 of the Trademark Act, 1999 (absolute grounds for refusal), where distinctiveness, capability of distinguishing sources or origin of goods of one manufacturer from another, and not being indication of the quality, quantity or characteristic of goods or services being provided when applied to the goods offered or services rendered by the proprietor are the threshold to be met with or under Section 11 of the Trademark Act, 1999 (relative grounds for refusal), where any similarity or identical marks will not be permitted or allowed for registration which may cause confusion or deception to the public, and envisages on the parameters that a mark must confirm to, in order to obtain the registration.

Amongst all the above thresholds (if followed) laid for Trademarks registerability, the keenly adoption of a strong trademark necessitates the identification of what accounts for such strength. Therefore, it is a well found law based on the Hon’ble Delhi High Court’s decision in the matter of Caterpillar Inc. v. Mehtab Ahmed, 2002 (25) PTC 438, wherein the Hon’ble Delhi High Court gave the categorization of marks into 6 forms viz. Generic words (commonly used words), Laudatory Epithets (adjectives conveying the quality or attribute of goods or services with laudation), Directly Descriptive words (describing the goods/services, quality, character of the goods), Indirectly Descriptive Words (remote reference to the nature or quality of the goods), Fanciful or Arbitrary words (no reference to any quality or character), Invented words (self-designed or work of imagination along with application to the goods/services),which enables smooth registerability to the trademarks adopted in the category of being arbitrary or invented words and for other categories, the trademark adopted must have acquired secondary meaning over a period of time and is in consistent and prior use for a longer period of time. Thus, application of these varying degree of the categories of marks give them specific strength of being registerable or qua non-registerable and evidently, common words and words of a descriptive character are entitled to no or lesser protection unless has obtained secondary meaning which has been dealt by the Hon’ble courts in various cases of McCain International ltd. v. Country Fair Foods Ltd (1981) RPC 69, Rhizome Distilleries Pvt. Ltd. v. Pernod Ricard S.A. France 2010 (42) PTC 806, Reliance Industries Ltd. v. Reliance Polycrete Ltd. 1997 (17) PTC 581,  J.R Kapoor v. Micronix India 1994 Supp (3) SCC 215.

Therefore, it is indispensable while adopting the trademarks, if pursuing the registration simultaneously that one should adopt and use invented mark or coined word (for example- KODAK, EXXON, ZEROX (for reference purpose only)), if the status of the mark at the time of applying is ‘Proposed to be used’ and if the trademark chosen is a generic word, it will definitely not withstand the parameters of the trademark law and in all probability is to be refused; thus, the solution dawns on to either devise a distinctive label or one can let the mark attain the secondary meaning, which might take ample amount of time and is to be shown through the sales or advertisement expenses borne on the marketing of the goods or services rendered by the proprietor, but eventually one may get the registration of the trademark in their favour, in either way. So, all in all for the success in the registration of the trademark, it’s better to adopt and use some invented or coined mark, otherwise proving the secondary meaning might take toll on the energy, time and productivity of the Proprietors business and a long haul for the awaited registration.