The following practice will be adopted in dealing with applications to register non-English words as trade marks where, if words with the same meaning were applied for in English, the application would be subject to an objection on the grounds that the words are descriptive and/or non-distinctive. The U.K. Registry has established a practice that there are no grounds for refusing registration of trade marks on the basis that they are descriptive or non distinctive in a language which is unlikely to be understood by the relevant trade in the UK or by the relevant average UK consumer of the goods/services in question. The same practice will be followed by the Trade Marks Registry in India. Accordingly if the foreign word is in a language that is not likely to be known to a significant proportion of the public in India, there will not exist any ground for objection that the mark is descriptive. Consequently, the Examiner will only object to the registration of word marks which are likely to be recognized as a descriptive of the characteristic of the goods or services. The relevant trade in India consists of those in this country who trade in the goods or services in question. Non English Descriptions which are most likely to be Understood Again in general, the average consumer is far more likely to be familiar with the non-English name of a product or service, or the local name for its geographical origin, than he is with the non-English words which describe other characteristics of the product or service. For example, the average English speaking consumer of wine would know that ‘Bourgogne’ is the French word for the region known as ‘Burgundy’ and would also be likely to know that ‘vin rouge’ means ‘red wine.’ Consequently, such names would be objectionable. This English practice could be well followed in India, if necessary by reference to internet. The more closely a non-English descriptive word resembles its English equivalent, the more likely it is that its descriptive significance will be understood by the consumer. Thus, for example the Italian words ‘Caffe Fresco’ should be rejected as a trade mark for coffee because the average consumer of coffee would be likely to see that it simply means ‘fresh coffee’ Non-English words which have become generic in the trade in the goods or services (by customers or traders) are excluded from registration under Section 9(1)(c) of the Act. So the German word ‘auto’ is not registrable for motor cars or their parts and fittings, or related services. The following language are likely to be known to a reasonable (and increasing ) number of Indian public. As such, descriptive use in any of these languages will be equally objectionable. Punjabi, Tamil, Bengali, Urdu, Hindi, Telugu, Oriya, Assamee, Rajasthani, Malyalam, Karnatak. Marathi, Gujarathi and English and scheduled languages under the constitution. Languages such as French, German, Italian, Spanish and Japanese are hardly known in India. Accordingly marks in such languages will be less objectionable.
Tag Archives: Trademark Registration India
Registration of Slogans as Trademark 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 KATh 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 DETAILh (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 WORLDh 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 ITh (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 Naturefs 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.
Names of Organizations as Trademark India
Words which describe the nature of an organization are not excluded from registration under Section 9(1)(b) of the Act, unless the words may also serve in trade to describe characteristics of the goods/services. For example, “National Institute for the Disabled” describes an organisation for the services provided by it. Consequently, there is no objection under Section 9(1)(b). In contrast “National Breakdown Service” would be taken to describe not only the organisation but also the characteristics of the services, ie. breakdown services with national coverage. Consequently, these words would be barred from registration under Section 9(1)(b). Further, the presence of the word “National” would give the impression of government patronage, participation or connection with any local authority or body constituted under any law. Therefore, it will be also objectionable under section 9(2)(d) of the Act.
Trademark of Mis-spellings of descriptive and other words India
Mis-spellings of descriptive words are excluded from registration by section 9(1)(c) of the Act and these cannot normally be said to consist exclusively of marks that may be used in trade to designate characteristics of the goods/services. However, mis-spellings commonly used in trade, such as XTRA instead of EXTRA, may be excluded from registration. Similarly, mis-spelt words RYS for “Rice” is equally objectionable as phonetic equivalent of the objectionable word. At the other end of the spectrum are fanciful mis-spellings, has a strong identity of its own. The Registrar takes the view that this is not a mark that may be used in trade to designate the geographical origin of the goods. In between these two extremes are mis-spellings which may not be common but which do little to disguise the descriptive words at the heart of the mark. The mark FROOT LOOPS in U.K. was refused registration because it was an obvious mis-spelling of FRUIT LOOPS being an apt description of fruit flavoured cereal sold in loop form. The refusal was upheld by Simon Thorley QC acting as the Appointed Person. The applicant conceded that FROOT LOOPS was no more registrable than FRUIT LOOPS and the phonetic point was not contested.
In this regard the practice is set out as below: a. In the case of common mis-spellings of descriptive words (as in the XTRA example above) there will be an objection; b. In the case of fanciful mis-spellings with skilful allusion, there will be no objection, when it is shown to have acquired a distinctive character by reason of use. c. In the case of mis-spellings which fail to disguise the descriptive words which comprise the mark, there will usually be an objection on grounds that the words are still likely to be seen as a description (FROOT LOOPS) and the trade mark therefore lacks any distinctive character; d. In the (relatively rare) circumstances where the mis-spelling effectively disguises descriptive words and creates a significant “surplus” (eg PNEUSTILE – new style), there will be no objection; e Mis-spellings of words which, in the true spelling, would he excluded – such as surnames and other non-distinctive (but not descriptive) words – will not normally face an objection, eg LUWIS (Lewis). f. Words which have their own (non-objectionable) meaning, but which are phonetically the same as a descriptive word (such as STERLING/STIRLING) will not normally face an objection.
Common misspellings – Whilst obvious misspellings of words may be acceptable because the average consumer would perceive the difference between the trade mark and the descriptive word, this may not be true when considering applications to register words which are commonly misspelt, or where the public are not used to seeing the word written down. For example, KOMMUNIKATION is clearly miss pelt and the average consumer would immediately recognise the difference between this mark and the descriptive word COMMUNICATION.
When confronted with words which are often misspelt, the difference may not be perceptible as a matter of first impression. For example, MILLENNIUM is often misspelt with either one “l” or one “n”. The average consumer is therefore less likely to see any perceptible difference between the word and the mark MILENNIUM. This may often be true where “double” letters appear in the middle of the word. Informal words may be more often heard than written own, eg, CUPPA for tea. The average consumer may therefore be unsure of the correct spelling of the word because they will be unused to seeing it written down. Arguments that the word is misspelt will not assist in these circumstances. Similarly, use of the “American” spelling of a word is less likely to be perceived as different to a normal presentation of the word. e.g. colour. Even if the difference is noticeable, the average consumer is unlikely to suppose that the difference is on account of the fact that the American spelt version of the word is a trade mark. Where there is a perceptible difference between the trade mark and those descriptive or non-distinctive terms, the trade mark will be generally acceptable. For example, the following examples of obviously misspelt are no different from descriptive words. NOWAX for ear drops (In this case the conjoining of the two words NO and WAX, the individual words are simply combined without lending any distinctiveness. On the other hand if the resulting merger of the two words become NOVAX it may be taken as an invented word. ‘SERIAL’ for breakfast cereals ‘DIETETIX’ for dietician services or which do not readily convey the descriptiveness of the words, may qualify for acceptance.
Misspellings generally used in trade – Care should be taken however where misspellings are commonly used, for example “XTRA” instead of EXTRA and ‘N’ instead of AND. Such variations will not lend distinctiveness. Where mis-spellings or abbreviations are commonly used in the trade, the marks would still be open to objection. For example : CUT ‘N BLOW DRY for hairdressing. DRIVE THRU /DRIVE IN for restaurant services. STARTER PAK for beginner packages. FRESHLY PREPARED 2 GO for takeaway pizzas. BEST 4 YOU
Trade Marks application for registration as Series India
Section 15 (3) makes provision for registration of trade mark as series in respect of the same or similar goods /services where the marks, while resembling each other in the material particulars thereof and yet differ in respect of -
1. Statement of goods or services in relation to which they are respectively used or proposed to be used; or
2. Statement of number, price, quality or names of places; or
3. Other matter of a non-distinctive character which does not substantially affect the identity of the trade mark; or
4. Colour It is an essential condition of registration that the differences in the ‘series marks’ should be only in respect of non-distinctive matters, such as size, (8 ½” size), description of the goods, (bleached, khaki shades etc), price , quality etc.
To qualify for registration as series, the mark should resemble each other in the material particulars but differ only in matters of non-distinctive characters which do not substantially affect or alter the identity of the mark.
The test is NOT simply whether the marks in the series would be regarded a confusingly similar to each other if used by unrelated undertakings. Any variation in the non-distinctive features in the marks must leave the visual, aural and conceptual identity of each of the trade marks substantially the same.
Further, it is not enough for marks to share the same conceptual identity if there are substantial differences in the visual or aural identities of the marks. The matter must be assessed by reference to the likely reaction to the marks of an average consumer of the goods/services in question.
Series marks with letters / numerals /colours Marks constituted by three letters or numeral marks consisting of five digits are regarded as capable of distinguishing per se. Accordingly such group of marks is to be registered only as independent marks and not as series.
Each of the trade mark in the series must be in respect of the same goods or description of goods or services. Section 15(3)(d) provides for registration of trade marks in series, where the mark differs only in respect of colours.
Procedure relating to series registration – Application for registration of series
marks is to be on form TM-8 or TM-37 as the case may be. Though it is permissible to file a single application for registration of trade mark in more than one class, it is to be noted that each series marks must be in respect of the same goods or services or description of goods/services. Where a group of marks are applied for registration as series in one registration and the Registrar does not consider them eligible for registration of series marks under section 15 the applicant will be required to delete any of the mark which is under objection.
It is also open to the applicant to apply on form TM-53 for division of the application to conform to the provision of section 22. All trade marks registered as series in one registration are deemed to be registered as associated trade mark, under section 16(4) of the Act. Therefore, the examination report should make this clear to the applicant.
