Tag Archives: Trademark Attorney India

Trademark Registration of Slogans India Under section 9(1) proviso , any trade mark which is demonstrated to be distinctive in fact, will be regarded as distinctive in law and therefore qualify for registration. One or more words, constituted as a slogan mark may be registrable but the onus is on the applicant for registration to show acquired distinctiveness. In Have a Break Trade Mark, (1993) the applicant sought to register the mark HAVE A BREAK in class 30. Evidence was provided that the applicant had been using the slogan HAVE A BREAK- HAVE A KIT KATh as a registered trade mark but the words, HAVE A BREAK alone had not been used as a trade mark in relation to chocolate, chocolate products, confectionery, candy, biscuits. Therefore, the application for registration refused. It was held that the criteria for registrability of slogan is no stricter than for other types of mark. The slogan marks may be considered as a nonconventional trade mark where the relevant public is slower to recognize them as indicating the product of an undertaking. Slogans will face the same objection under Section 9(1)(b) of the Act, if they are comprised of a word combination that an average consumer would regard as a normal way of referring to the goods or services or of representing their essential features. The intended purpose of the goods or services should be regarded as an essential characteristic of the goods or services for the purposes of this assessment. Slogan when used in plain descriptive language is always considered non-distinctive. For example the UK Registrar objected to the registration of slogan: NEVER CLEAN YOUR SHOWER AGAIN (Class 3) because it describes in plain language the intended purpose of the goods. It is considered that the fact that the statement might not be literally true was not decisive. The mark gAN EYE FOR DETAILh (for clothing) was refused because it is a common phrase which, considered in relation to clothing, designates not just a characteristic of the consumer, but also the quality of the goods, i.e. clothing of such quality that it will be appreciated by those consumers with an eye for detail. The mark gHOW TECHNOLOGY SHAPED THE WORLDh would not be acceptable for publications, information or exhibition type goods or services. The UK Registrar accepted the mark gTHE BEST WAY TO PREDICT THE FUTURE IS TO CREATE ITh (for technology related services in classes 35, 38 & 42) because this was not considered to be a normal way of designating these services, nor to be a commonplace phrase. Similar approach may be adopted by the Registrar in India. Some allowance must be made for the fact that, in advertising, it is customary to use shortened phrase when promoting the goods or services. The refusal to register the trade mark on the ground that it was a natural abbreviation for the longer expression. The ambiguity may enhance the prospects of registrability, and based on that the UK Registrar accepted the mark Naturefs REAL THING for foodstuffs in classes 29 and 30 because the reference to natural products is sufficiently allusive. However, it is possible to take a view that ambiguity in a sense may render the mark misleading and deceptive as to its characteristics to entail objection. The mark BEST BUY (on a coloured background resembling a price tag) was refused registration by the European Court of First Instance despite the applicant’s argument that it had no precise descriptive meaning to consumers. A slogan which has two meanings will not be registrable if one of them is a description of the goods or services. The mark WE SET THE HIRE STANDARD was refused (for car hire services) despite the possible phonetic alternative meaning, and this would have been the case even if the other meaning had not also been a description of the services. Straightforward value statements that could apply to any undertaking are devoid of any distinctive character. Inspirational or motivational statements – These types of slogans are considered to be non-distinctive particularly for services. Customer service statements – Similarly, straightforward statements about customer service that could apply to any undertaking are also devoid of any distinctive character. Purely promotional statements – The mark SAY IT WITH CHAMPAGNE is composed of a well known advertising strap line “Say it with…” followed by the name of the goods (Champagne). This mark therefore fulfils a purely marketing function, i.e., an invitation to the public to send a message through the gift of champagne. Statements by/about the user of goods/wearer of clothing – Slogans such as “I My Boy Friend” or “Here comes Trouble” are often used to decorate goods, particularly clothing . T-shirts, sweatshirts or baseball caps. In this context, consumers are unlikely to perceive this type of slogan as a sign of trade origin. When seen they seem to be as a personal statement by/about the wearer/user rather than indicating the trade origin of the product. Slogans which are likely to be seen as such will therefore be open to objection under Section 9(1)(c) of the Act.