Have you ever been on the road and identified a restaurant like McDonald’s from hundreds of metres away? Is there something that helps you identify a restaurant without actually reading its name? If you have answered the big yellow glowing ‘M’, you are thinking in the right direction! Be it the famous golden arches of McDonald’s, or the three-striped shoes everyone can tell as being Adidas shoes, they all have one thing in common. That’s the fact that they are all trademarks.
As per the World Intellectual Property Organisation (WIPO), a trademark is “a sign that is capable of distinguishing the goods or services of one enterprise from those of other enterprises.” Whereas, if we look at India, the Trademarks Act of 1999 defines a trademark as “a mark that is capable of being represented graphically and also is capable of distinguishing the goods or services of one person from those of others. It may also include the shape of goods, their packaging and the combination of colours.”
Do not let the term ‘represented graphically’ mislead you, though. Even a sound or a motion, can become a ‘mark’ under trademark. The weight remains on if it helps differentiate a product or service from its competitors. Therefore, one can say that trademarks form a part of one’s distinctive brand or trade identity. The more popularity a brand or a trademark gains, the more important it becomes to protect it. One can argue that a trademark sometimes even plays an important role in the goodwill of a business.
Trademarks play an important role apart from the main role of ‘differentiation’. They indicate a certain quality and standard of the said goods or services being offered. This is the role that most closely associates with goodwill. When a tech enthusiast sees the apple with one-bite in on the Apple logo, he associates it with a certain quality and standard that is associated with the goodwill of Apple Inc.
Next, we must understand what is the purpose of most Intellectual Property Rights. The ‘rights’ that are referred to in IPR are primarily exclusionary in nature. This means that the rights granted in intellectual property are mainly for the purpose of excluding other persons (individuals or companies, or any legal person) from using the IP holder’s property for commercial purposes. Now with that out of the way, one simple reason for trademark protection is to prevent unfair use of one’s brand identity. It does so by not only providing rights, but also giving remedies to the right holders in case those rights are violated. Therefore, trademark protection also deters unfair competition between corporations and companies.
Trademarks also aid in preventing consumer confusion. They serve as a mark of identification. Here, it becomes important to point out that sometimes a trademark might be in the form of a ‘trade dress’. A trade dress is a form of packaging or presentation of goods or services that a reasonable consumer would associate with a certain business, brand or company. A consumer might purchase a Coca-Cola bottle without the label, as they associate the shape of it with the identity of the Coca-Cola brand.
Trademarks are also measured in respect of their ‘strength’. It is the measure of the distinctiveness of that particular mark. A trademark may be arbitrary, fanciful, suggestive or descriptive. This also determines if the mark can get protection under the law or not. The strongest marks are ones that are arbitrary, fanciful and out of the ordinary.
Nike uses a swoosh symbol, which is really unique. This is a strong trademark. Additionally, made-up words also constitute strong and distinct marks. The name ‘Labubu’, for example, or the term ‘Kodak’, are made-up terms which do not have a usage in ordinary day-to-day life. Therefore, granting protection to them becomes easier.
If one uses a reference that is out of the ordinary, the resultant trademark can expand protection jurisdiction in one’s industry. In the case of Bhavanesh Mohanlal Amin And Anr vs Nirma Chemicals Works And the court restrained a party from using the name ‘NIMA’ for a separate class of goods from ‘NIRMA’, which is a well-known washing product brand (protection under trademark law is largely granted specific to a class of goods or services and is not a blanket protection). The word ‘NIRMA’ is an invented word and holds a strong reputation. Therefore, its use was not permitted by another person even though the goods they sold were in a different class. This shows how an arbitrary or abstract mark can grant greater protection to the mark holder, as it becomes more difficult to associate its meaning with anything else.
Similarly, an arbitrary or fanciful mark does not describe or suggest any characteristic of the product. The word ‘Yamaha’ has nothing to do with motorcycles, nor does the word ‘Apple’ have anything to do with computers. This is why such marks are called ‘fanciful’ and have the strongest protection as they are new and have no prior use with respect to the goods or services they are now being associated with.
Suggestive marks do not describe the product but suggest its nature or characteristics. For example, ‘Boost’ as an energy drink does not describe the drink, but implies strength. It also implies that the drink supplements the strength of consumers.
Descriptive marks are the weakest marks to get protection for. They might identify the product in one way or another. It is general in nature. Think of a pizza shop that trades with the brand of ‘Best Pizza’. To get protection under trademark law, a descriptive mark must show that it has acquired a secondary meaning in the minds of consumers. An example of this is businesses that operate with surnames or family names. They are deemed as descriptive marks. A mark of this kind will not get protection until it acquires a secondary meaning. Examples of this include ‘McDonald’s’, ‘Bajaj’, ‘Mahindra & Mahindra’ or ‘Hilton’.
Last come generic marks. These marks do not get protection in law. This is because they will cause unfair competition in an industry or class of goods if they are granted protection. For example, if a dairy company could register the word ‘Milk’ as a mark as they sell that product, it would disallow other dairy companies from using the term ‘Milk’, which is generic in nature and cause the competitors to not be able to describe their products at all. Such generic words are deemed to have become publici juris (belonging to the public) and therefore cannot be appropriated by anyone.
Trademarks can be of varying kinds. These include word marks, sound marks, device marks, colour marks, collective marks, shape marks, certification marks, or even shape and smell marks.
Lately, courts have held that domain names can also serve as a trademark. This is because they possess all the needed features of a trademark and help individuals identify a business. If a person uses a similar or the same domain name as the trademark or name of another business, it may lead consumers to believe that they are engaging with someone else. Therefore, an action of passing off can lie in such cases. In 2000, in the case of Acqua Minerals Ltd. v Pramod Borse[1], The Delhi High Court had restricted the respondent from using the domain name ‘bisleri.com’ as it was deemed to be a trademark of Acqua Minerals, the company that owned Bisleri, the water bottle brand.
Another recent development has been that of hashtags. The US Trademark Office has recognised that hashtags may hold the status of a trademark if they serve as identifiers (this is also the necessary precondition for a hashtag to qualify as a trademark).[2] In Singapore as well, hashtags have attained a similar status. For example,“#PizzaMeNow”has been registered by Pizza Hut International with the Trademark Register.
Lastly, an interesting aspect to keep a note of is the rise of Artificial Intelligence. AI has been coming into a prominent space of use by multiple businesses and enterprises. The problem here is that a lot of prominent AIs and LLMs are trained on similar datasets and information. This may lead to replicated, similar and duplicate end products, which may enhance the need for due diligence on the part of businesses. Additionally, without proper protocols or legislation in place to protect data or to allow individuals and corporations to opt out, some IP may inadvertently end up in the pool of public knowledge at the hands of the said AI and LLM models.
Trademarks are an important feature of building and protecting brand identities, employed by businesses for the purpose of enhancing their position amongst consumers. There are various types of marks, and the possibility of one getting protection for their mark is also contingent on the distinctiveness of the mark that they wish to protect. There have been many recent developments in the field of trademarks, which have been amplified due to the rise of social media, the internet and AI. These developments will need proactive legislative action to ensure smooth commercial functioning in the respective jurisdictions of the said legislative action.
