This article has been written by Mr. Arjun Singh Tamang, a 2nd year student of Faculty of Law, University of Delhi.

Trademark is an asset, an intellectual property which is a word, color, symbol, phrase, design or unique combination of these that legally helps in product differentiation of a good or service.

The purpose of trademark is to represent its products or services and to protect its brand quality and goodwill. Registered Trademark helps in establishing an exclusive ownership and over the product. This legal right helps in initiating an action against an individual, firm or business entity in case of infringement of trademark by using the same without prior approval or permission.

The Trademarks Act 1999 permits the registration of different types of trademarks such as word marks, service marks, collective marks, geographical indication,  certification marks, series marks and many more.

1. Word Marks – Word Marks are the most registered trademark and somewhat is similar to trademarks but only difference is that it is used to differentiate goods and products and not services. It is generally a combination of words, design to give unique Differentiation. In Yahoo Inc. v. Akash Arora (1999) case law the plaintiff filed a suit for permanent injunction so that other party cannot use the domain name “Yahoo” as it was the matter of infringement of intellectual property rights violation. The defendant contended that his website give proper disclaimer about the ownership of the domain name that it is not same and is different. The High Court rejected the disclaimer defense and gave its verdict that use of domain name “Yahoo India” is way too identical and phonetically similar to the plaintiff’s domain name that is “Yahoo”. It may confuse the consumers thinking that both the domain name is owned by single owner. The court ordered the defendant to change its domain name.

For Example – Coca-Cola, Nestle, Amul are some famous word marks.

2. Service Marks – Service marks are the trademark consisting of words, design, phrase or logo or combination of these which is used to legally differentiate between various services provided by the service provider. It is an intangible asset. Service marks are registered from class 35 to 45 of Trademark Act 1999

For example – FedEx and Google are some of the registered service marks provider.

3. Logos and Symbols

This type of trademark is the most memorable and eye catchy. It comprises design, symbol or combination of both in such way that consumers just by seeing the logo or symbol can recognize the product or services. These trademarks are nowadays not just about only product but it also talks about quality of life standard the consumer is living by consuming these products.

For example – McDonald’s golden M arch is the classic example. Its logo is more than enough to tell people that what it is. 

Nike with their swoosh logo is another example of telling world about their product without words.

Apple’s logo or symbol is enough to tell about its brand.

4. Shape of Goods

Shape marks are the trademark which is three-dimensional with a specific or peculiar shape which is so unique that it represents its product or services. It is a measure to safeguard the shape of the product. This trademark is very beneficial for the blind consumers as they can touch the product and feel the shape and can consume their desired products.

In famous dispute known as “Vodka Case” between Gorbatschow Wodka Kg vs. John Distilleries Case law (2011)the dispute was for the shape of the bottle used to sell vodka by defendant as it was similar to appellant’s although the logo, name, symbol were different. The Bombay High Court recognized shape as form of trademark and passed an injunction order against the defendant as his vodka bottle shape is way too similar to the appellant and if its sale is allowed it would cause irreparable damage to the appellant.

For example- Coca-Cola has acquired the shape trademark for its bottle so that it cannot be copied by the competitors.

The Weber barbecue is one of the classic examples of this three-dimensional trademark.

5. Series Marks

Service marks are trademarks having resemblance with each other as they share a common family denoting as a family of marks. They differ only in non-distinctive character such as price, quality or size but overall they are the product under a single tree. They usually have a common syllable, prefix or suffix to denote a common family.

For example- Mc series trademark in McDonald this family includes McPuff, Mc Veggie, Mc nuggets, Mc Cafe.

Uber series include UberPool and UberEats.

6. Collective Trademarks

Collective trademark means a trademark which is used by association or organization of individuals to represent that they provide a certain level of quality or accuracy service. These trademarks are usually used by an organization, institutes or any association. Individuals who are part of such association have to acquire certain level of qualifications then only they can use this trademark. The primary objective of collective trademark is to protect consumers against malpractice.

For Example – A Chartered Accountant who is a registered member of the Institute of Chartered Accountants can use the prefix “C.A”. 

CPA represents members of the Society of Certified Public Accountants.

7. Certification Mark

There are various Certification marks in India which tells consumers about the product’s origin, type of material grade used & other minute but extremely significant details about the product. It is used to define a fixed standard for a product. It is there to gain consumers confidence on the product that it has met specific prescribed standards defined by the certifying authority that owns certification marks. Furthermore, it makes consumers informed and aware of what they are consuming. This trademark helps in building trust and goodwill for the products.

For example – Agmark for all agricultural products.

BIS Hallmark gives certification to the purity of gold jewelry.

ISI marks- certification for industrial products.

8. Geographical Indicators

A geographical indication is a sign used for products to define qualities, goodwill and reputation which it derives from its place of origin. It is a form of intellectual property which is based on geographical territory and qualities of the product represent the place of origin. The GI tags are awarded by the GI Registry. In this famous case law of (Darjeeling Tea) which is between Tea Board Of India vs. ITC Ltd. In this case the appellant contended that defendant has fraudulently used GI tag by using name as ‘Darjeeling Lounge’ for its business without approval. The honorable court of Calcutta held that there is no relation between defendant using the term Darjeeling and the plaintiff’s right that’s why the suit was dismissed.

For Example -Darjeeling Tea was the 1st GI under the Intellectual Property Rights in India.

Nagpur’s oranges, Basmati rice, kohlapuri chappals etc. are classic examples of geographical Indicators.

Conclusion

The Primary goal of trademark registration is the protection of goods and services by giving them distinctive marks. There are various type of trademark which are being registered in Indian Trademark Act 1999 but at the end the purpose of each and every type of trademark is to enhance security of the products and services so that consumer can get the best of his own choice.

References 

Aishwarya Says:

Law students often face problems, which they cannot share with their friends and families. We have started a column on our website Student’s Corner. In this column we are talking to several law students about the challenges that they face. Students who are interested in participating in the same, can fill this Google Form.

IF YOU ARE INTERESTED IN PARTICIPATING IN THE SAME, DO LET ME KNOW.

The copyright of this Article belongs exclusively to Ms. Aishwarya Sandeep. Reproduction of the same, without permission will amount to Copyright Infringement. Appropriate Legal Action under the Indian Laws will be taken.

If you would also like to contribute to my website, then do share your articles or poems to aishwarya@aishwaryasandeep.com

Join our  Whatsapp Group for latest Job Opening