Colour trade marks India

Colour trade marks India

In order to constitute a trade mark, a colour or combination of colours must be capable of distinguishing the goods or services of one trader from those of other traders. If a particular colour of packaging has become distinctive in fact as indicating the goods of a particular trader, there is no reason why it should not be protected by registration. It is conceivable that extensive use of two colours in many different arrangements may result in the colour combination per se becoming distinctive of the applicants’ goods. However, if the colours are used not in a special or particular pattern or arrangement, it is likely to be more difficult to prove that in such cases colour would lend distinctiveness as a badge of origin.

Single Colour

A single colour may be registerable as a trade mark if it is very unusual and peculiar in a trade and is recognized by traders and consumers alike that it serves as a badge of origin for that class of goods. See Dyson Ld’s Trade Mark Application 2003 RPC 47.  As colour per se is not normally used by traders as a means of brand identification, unlike words or pictures, consumers are not in the habit of making assumptions about the origin of goods and services based solely on their colour or the colour of their packaging.  It follows therefore that a single colour will only in exceptional circumstances be capable of denoting the origin of a product or service.  Marks consisting of a single colour will usually be liable to objection under Section 9(1)(a) of the Act because they inherently lack the capacity to distinguish. In some cases single colours may also attract additional objections under Section 9(1)(b) and (c) of the Act if the colour sends a descriptive message or the colour is customary in the trade i.e. the colour RED for fire fighting services, or the colour GREEN for ecological goods/services. There may be occasions where colour applied to the goods themselves may be inherently more distinctive than when the colour is applied to the packaging; for example, GREEN beer may be quite distinctive, yet the colour GREEN applied to a beer bottle or can would be non-distinctive.  The examination of single colour marks requires careful analysis, because there is a public interest in not limiting the availability of colours for other traders. Each case must be assessed individually.

In the UK, a practice has been established to allow marks consisting of colour alone to be graphically represented if they are filed in the form of a written description of the colours(s)(eg dark blue) and are accompanied by the relevant code(s) from an internationally recognised colour identification system, in existence e.g. Pantone®, RAL and Focoltone®. The law or practice in India does not provide for such interpretation. In this connection, the following view expressed in the official practice of U.K. Registry is more relevant to our practice.  “There are limits to what can reasonably be expected of third parties. It must be reasonably practicable for persons inspecting the register, or reading the Trade Mark Journal, to be able to gain an understanding from the graphical representation of what the trade mark is. Representations which are precise but impossible to interpret without costly specialist equipment or services, place too high a burden on third parties and are likely to be rejected because they are not “easily accessible.” Accordingly, a mark defined as “a blue bottle of optical characteristics such that if the wall thickness is 3mm the bottle has, in air, a dominant wavelength of 472 to 474 nanometers, a purity of 44 to 48%, an optical brightness of 28 to 32%” was rejected by Appellate authority in Ty Nant Spring Water Ltd’s Application [2000] RPC 55, because it would require third parties to use a spectrophotometer to ascertain whether a particular colour was or was not covered by the description, and in fact served to veil the identity of the sign (cobalt blue).  The views of the Registry in India are no different from what is quoted above. Strong evidence should therefore, be required to demonstrate factual distinctiveness for registrability of colour marks in India.

Combination of colours

Trademark of Non-English descriptive words

Trademark of Non-English descriptive words

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.

Trademark of Mis-spellings of descriptive and other words India

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.

Registration of Slogans as Trademark 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 KAT 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.

Trademark Registration India

Trademark Registration India

It is not any trade mark which is registrable. To be registrable the trademark should be distinctive and should not be similar to any other trade mark registered for the same or similar goods or used by a competitor whether registered or not. In the case of a similar mark used by a competitor but not registered difficulties for registration will arise only if the owner of the mark chooses to oppose the registration. In choosing a trade mark therefore one has to see whether the mark satisfies the requirement of distinctiveness contained in section 9 of the Trade and Merchandise Marks Act, 1958. This is not very difficult. Thereafter the applicant has to verify as far as possible whether a similar mark, has been registered  or used by others for similar goods. The applicant can make a search in the indexes kept for public inspection at the Trade Marks Office with or without professional assistance from practitioners of trade mark law. In the alternative a request for a search report may be made to the Registrar of Trade Marks in the prescribed form. It may be advisable to do both as it will provide some sort of evidence of bona fide of the applicant in adopting the mark which is very important. While choosing a trade mark it is dangerous to start from some existing trade mark and then make modifications. However, after independently adopting the mark, it should be ascertained  whether a similar mark has been registered or used or already applied for registration. If the investigations discloses the existence of a similar mark, it is best to discard the mark chosen and start again the whole process.  It is not always easy to decide whether two marks are similar. The best way to determine the question is to consider one`s  reaction and apply common sense.

Trademark Application Examination Law India

Trademark Application Examination Law India

Once the data entry (including scanning & Vienna codification of non-text trademarks) of application for registration of a trademark is complete the same is sent for examination. Examination of Trade Mark application will cover examination as to compliance with–

Filing requirements governed by procedure prescribed under the Trade Marks Act and Trade Marks Rules Substantive requirements for registrability of the mark In particular, the official assigned examination duties will scrutinize the application as to- Whether the application has been filed in the manner as prescribed in the Trade Marks Rules 2002, Whether any same/similar mark in respect of same/similar goods/services is there on record, Whether the trademark applied for registration can be accepted for registration under the Trade Marks Act 1999, Whether any restriction, condition or limitation is required to be imposed.

The Examiner will give a consolidated ‘Examination Report’ mentioning the objections (if any) as to the acceptance of application for registration; or as the case may be, forward a proposal to accept the application with or without any restriction, condition or limitation on the use of trademark. Examination report is to provide the list of conflicting marks on record.

The examiner will mention all deficiencies in the application and will raise all applicable objections to the acceptance of application for registration of trademark. The applicant is required to respond to the examiner’s objection(s) within a period of one month from the date of receipt of Examination Report. The reply to the Examination Report together with evidence of use of the trademark in India and other documents attached with the reply will be duly considered. In case the objections cannot be waived an opportunity of a Hearing will be given to the applicant. The application will thereafter be accepted with or without any restriction, condition or limitation on the use of trademark; or as the case may be, it will be refused for registration. The decision as to acceptance or refusal of the application will be communicated to the applicant. The accepted application will thereafter be advertised in the Trade Mark Journal.

Relevant laws or provisions to be referred to during Examination

The development of law as reported in recognized international law reports such as Reports of Patent Cases (RPCs), European Trade Mark Reports (ETMRs), Fleet Street Reports (FSRs) the US Trade Marks Reports will continue to be followed as being only of persuasive value. To a large extent the practice of the Registry in India broadly corresponds with the practice prevailing in the U.K.

While the individual circumstances surrounding each application are paramount, it is to be noted that ‘Precedents’ are of great value, though not decisive. Section 91 of the Trade Marks Act, provides for an appeal against an order or decision of the Registrar to the Intellectual Property Appellate Board (IPAB). In some cases, parties may also invoke the writ jurisdiction of High Courts. It is obvious, therefore, that whenever the Registrar or any officer acting for him passes an order as a tribunal under the Act it should be a reasoned and a speaking order.[See Rule 40 of Trade Marks Rules, 2002].

In this connection, the principle laid down by the Supreme Court is to be kept in mind: “The Court insists upon disclosure of reasons in support of the order on two grounds – one, that the party aggrieved in a proceeding before the High Court or this Court has the opportunity to demonstrate that the reasons which persuaded the authority to reject its case were erroneous; the other, that the obligation to record reasons operates as a deterrent against possible arbitrary actions by the executive authority invested with judicial power” (Travancore Rayon v. Union of India)

The examination of trade marks for acceptability under the Trade Marks Act 1999 must be by reference to the provisions of that Act and Rules framed there under taking into account the established practice of the Registry and the law as laid down or endorsed by the Intellectual Property Appellate Board (IPAB) and by Courts in India which is binding on the Registrar.

Trademark Application Filing Law India

Trademark Application Filing Law India

Applications for registration of trade marks are to be filed in the prescribed manner, either in paper form or in an electronic form.   Pursuant to sub-section (3) of section 6 which enables the maintenance of Register of Trade Marks wholly or partly on computer, the Register of Trade Marks is now being maintained only on computer in an electronic format.  The detailed procedure for filing of trade mark applications is explained herein below:

Section 18(1) enacts that – “any person claiming to be the proprietor of a trade mark used or proposed to be used by him, who is desirous of registering it, shall apply in writing to the Registrar in the prescribed manner for the registration of his trade mark.”

The provisions contained in rules 25 to 31 and 33 to 36 of the Trade Marks Rules, 2002 prescribe the procedure in this behalf. These are as follows:

Rule 25. Form and signing of application:- (1) An application to the Registrar for the registration of a trade mark shall be signed by the applicant or his agent. (2) An application to register a trade mark under sub-section (2) of section 154 for a specification of goods or services included in any one class shall be made in Form TM-1. (3) An application to register a trade mark under sub-section (2) of section 154 for a specification of goods or services included in any one class from a convention country shall be made in Form TM-2.  (4) A single application for the registration of a trade mark for different classes of goods or services from convention country under sub-section (2) of section 154 shall be made in Form TM-52.

(5) An application to register a textile trade mark (other than a collective mark or a certification trade mark) consisting exclusively of numerals or letters or any combination thereof for a specification of goods included in one item of the Fifth Schedule under rule 145 shall be made in Form TM-22.  (6) An application to register of a textile trade mark other than a collective mark or a certification trade mark) consisting exclusively of numerals or letters or any combination thereof for a specification of goods included in one item of the Fifth Schedule under rule 145 from a convention country under sub-section (2) of section 154 shall be made in form TM-45. (7) (a) An application under section 63(1) to register a collective trade mark for a specification of goods or services in any one class shall be made in Form TM-3.