In today’s corporate world, the brand name is the biggest valuable asset for a company. Therefore protecting the brand name is a basic step taken by all the companies even if it is a start-up. Can any name be protected as a brand name under the Trademarks Act, 1999? What are the different types marks that can be protected under Trademarks Act, 1999? Through this article we will study the different types of trademarks and also study which mark is considered as the best trademark for it to be registered easily.
Trademark is something which depicts a company’s name or its products. Trademark includes word, logo, sound, smell or action. Therefore trademark includes WORD, LOGO, SOUND, MOTION and MULTIMEDIA.
WORD MARK consists of one or more words. The word mark is always registered in a standard font. This means that if you want to protect a word in a specific font, you have to apply for a figurative mark or Logo. Ex: Facebook, Google etc.
LOGO or Figurative marks are the trademarks that consist of just a figure or a figure combined with one or more words. Words in a specific font are also considered figurative. Figurative marks can be registered in black and white or in colour. Ex: Logo of BMW, Audi, Tata, Jaguar etc.
SOUND MARK can be a trademark and can therefore also be registered. A sound mark is a sound or a melody with a distinct recognition effect. When applying for a sound mark the mark can be represented by a sound file or by an exact description of the sound in notation. Ex: Roar of the Lion in MGM production house is the best example of Sound mark.
MOTION MARK is a mark where parts of the trademark are shifting, changing or moving. One example of a motion mark is an animated logotype. When applying for a motion mark the mark can be represented either by a video file or a series of still images that show the motion. Ex: NOKIA Connecting People.
MULTIMEDIA MARK is a mark that consists of a combination of sound and picture. The mark can be represented by an audio-visual file that shows the combination of sound and picture. Ex: Words like FATALITY and FINISH HIM in the game MORTAL KOMBAT is a multimedia mark consists of the whole scenario with the sound, motion, pictures and words.
These different types of marks can be protected under the Trademarks Act, 1999. But still one question remains unanswered i.e. what is the strength of the Trademark? To answer this question we first need to know how to determine the strength of a Trademark? The Trademarks Act, 1999 answers this question by categorizing trademark (wordmark) under these following types:
GENERIC TERMS is one that really does not qualify for any sort of trademark protection. It is essentially a term that is commonly used as the name of the kinds of goods or services to which it is referring. Ex: Naming a shoe company as BOOT Co. In this case the word BOOT will not qualify to be registered under Trademarks Act, 1999 because it clearly describes the goods or services provided by the company. Therefore generic terms are 99% of the times bound to be rejected.
DESCRIPTIVE TERMS are words that identify the characteristics of the product or service to which the mark pertains. It is similar to an adjective. It directly describes the goods or services provided by the applicant. Ex: PIZZA HUT, BURGER KING etc. Here in case of descriptive terms the percentage of getting the term rejected by the Registry is 90%.
SUGGESTIVE TERMS are words that suggest as opposed to merely describe the ingredients or characteristics of the products or services and require the consumer to use imagination and perception to determine what the actual goods or services are. Ex: SUGAR FREE. When it comes to suggestive terms the percentage of rejection comes down to 50%.
ARBITRARY TERMS are words that have no relation to the goods or services at issue. Common words that already exist can become strong trademarks when applied to a product or service that is completely unrelated to the word. Ex: APPLE. When it comes to arbitrary marks the percentage of rejection is reduced 10% i.e. the strength of the trademark is strong if the word is arbitrary in nature.
FANCIFUL TERMS are words that have been invented solely for use as a trademark. The words are imaginative and created, and also cannot be found in the dictionary. These are potentially the strongest trademarks because they are inherently distinct and therefore easier to protect under trademark law. Ex: KODAK is a fanciful term. Therefore the percentage of getting a fanciful term registered is 99%.
Therefore through this article we can conclude that any term which fits the definition of Fanciful term is considered as a strongest term and is bound to be accepted by the Registry. This is why Corporate giants always tend to invest a great amount of investment in brand names so that there is no hurdle in the Registration process.