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.