Secondary trade mark India

Where a trade mark consists of several features, the exclusive right of registration is in respect of the mark as a whole. (Section 17). However, a mark may acquire a distinctive character as a result of its being used as part of, or in conjunction with, another mark.  There is no requirement for a non-distinctive mark to have been used alone before it can be registered on the basis of acquired distinctiveness, but where such a mark is used alongside another distinctive sign, the burden on the applicant to show that the non-distinctive mark has come to be seen as a secondary trade mark will be greater. See TREAT case, [1997] E.T.M.R. 118.  Non-traditional marks, particularly colours and the appearance of the goods or their packaging, often pose particular problems. Such marks are seldom used as the principal means of distinguishing the trade source of the goods or services. Nevertheless, they are capable of being used as secondary trade marks.  The key issue will usually be whether the proprietor has used the mark distinctively to educate the public that it is a trade mark.  The most obvious way of educating the public that such a mark is a trade mark is for the proprietor to indicate this in its advertising by the use of statements such as “look for the one with the [blue] wrapper” or “you can rely on the [description of appearance of goods or packaging] to tell you its a [brand name]”. Evidence of such use is required. In this connection, it should be noted that the use of small letters “tm” in relation to a mark with no trade mark character is not relevant. It can make an impression more on a lawyer than on an average consumer. One means of signifying the trade mark significance of colours is to use them as a livery, i.e. as a consistent colour scheme applied to a range of products of the same general kind so as to designate the trade source. The use of such liveries for buses, trains and vehicle service stations are good examples of such use in relation to services. On the other hand, evidence that an applicant uses a wide range of colour schemes in relation to goods or services of the same kind tends to point away from the trade mark significance of any one such colour scheme.  Where there is doubt as to whether the proprietor has done enough to educate the relevant public that at least one of the functions of the sign in question is to identify the product or services as those of a single undertaking, evidence that the relevant public has come to rely upon the sign in question for the purpose of distinguishing between goods/services of different undertakings may be sufficient to show that the sign is recognized as serving a trade mark function. The best evidence of reliance is that which shows that (and in what way) those making selection decisions between competing products or services have come to rely upon the sign in the course of the selection process.