What Marks Are Registrable?

In India, under the Trademark Act, 1999 and the Trademark Rules, 2017, a variety of marks can be registered for trademark protection. Here’s a breakdown of some key categories of registrable trademarks:

1. Distinctive Marks:

• The core requirement for registrability is that the mark must be distinctive. This means it should not be merely descriptive or generic for the goods/services it represents. It should function as an indicator of source, allowing consumers to distinguish your brand from competitors.

Examples of Distinctive Marks:

• Invented Words: “Xerox,” “Kodak,” “Apple” (These words didn’t have a meaning before becoming trademarks)
• Words with Secondary Meaning: “Virgin” (for airlines), “Red Bull” (energy drink) (These words have a common meaning but have acquired a separate meaning for the specific brand)
• Logos and Symbols: These can be highly distinctive and protectable, like the Nike swoosh or the Apple logo.
• Slogans: Catchy phrases can be trademarks too, for instance, “Just Do It” (Nike) or “Melts in Your Mouth, Not in Your Hand” (M&M’s)

2. Other Registrable Subject Matter:

• Shapes (3D Trademarks): Under specific conditions, the shape of a product can be a trademark if it has acquired distinctiveness. Examples include the Coca-Cola bottle or the Lego brick (with specific proportions).
• Sounds: Distinctive sounds can also be trademarks, like the MGM lion’s roar or a specific jingle associated with a brand.
• Colors (with limitations): In some cases, a specific shade of color associated with a brand can be a trademark. This is not common, but examples include the “Tiffany Blue” color linked to Tiffany & Co. jewelry.

3. Considerations for Registrability:

• Even marks falling under these categories might face challenges during registration. For instance, a logo combining generic elements might need to demonstrate distinctiveness.
• A trademark search is crucial before filing an application to assess the likelihood of your chosen mark conflicting with existing trademarks.

In essence, a registrable trademark should be:

• Distinctive: Not merely descriptive or generic for the goods/services.
• Lawful: Not deceptive, offensive, or violating other legal restrictions.
• Unique: Not confusingly similar to existing registered trademarks.

By understanding these criteria and seeking professional advice if needed, you can increase the chances of successfully registering your trademark in India.

Examples of Registrable Trademarks

Here are some examples of registrable trademarks in India, categorized by the type of mark:

Words:

• Invented Words: “Xerox,” “Kodak,” “Apple” (These words didn’t have a meaning before becoming trademarks)
• Words with Secondary Meaning: “Virgin” (for airlines), “Red Bull” (energy drink) (These words have a common meaning but have acquired a separate meaning for the specific brand)

Logos and Symbols:

• The Nike swoosh
• The Apple logo with the bitten apple
• The McDonald’s golden arches

Slogans:

• “Just Do It” (Nike)
• “Melts in Your Mouth, Not in Your Hand” (M&M’s)
• “The Breakfast of Champions” (Wheaties)

Shapes (3D Trademarks):

• The shape of the Coca-Cola bottle
• The triangular Toblerone chocolate bar
• The Lego brick (with specific proportions)

Sounds:

• The MGM lion’s roar (movie studio)
• The Nokia ringtone

Colors (with specific limitations):

• The distinctive shade of purple used by Cadbury for their chocolate packaging (Not the color purple itself, but the specific shade associated with the brand)
• The “Tiffany Blue” color associated with Tiffany & Co. jewelry (similar to the previous example)

Remember:

• Even though these are examples, registrability ultimately depends on whether the mark is:
  • Distinctive: Not merely descriptive or generic for the goods/services it represents.
  • Not confusingly similar to existing registered trademarks.
• A trademark search is highly recommended before filing an application to assess the likelihood of your chosen mark being registrable.

I hope this clarifies the types of trademarks that can be registered in India.

What Marks Are Not Registrable? 

In India, several categories of marks cannot be registered as trademarks under the Trademark Act, 1999 and the Trademark Rules, 2017. Here’s a breakdown of some key types of non-registrable marks:

1. Devoid of Distinctive Character:

• Generic Marks: These terms directly describe the goods or services they represent. Examples include “computer” for computers or “chair” for chairs.
• Descriptive Marks: These terms describe the qualities, ingredients, or functions of the goods/services. For instance, “Juicy Orange” for orange juice or “Long-Lasting Battery” for batteries.

2. Lacking Inherent Distinctiveness:

• Letters, Numbers, or Common Symbols: These alone are generally not distinctive, but they might become registrable if combined with other elements to create a unique mark. For example, “ABC” wouldn’t be registrable on its own, but “ABC Electronics” could be.
• Shapes Dictated by the Nature of Goods: The shape of a product arising solely from its function cannot be a trademark. For example, the shape of a plate for serving food likely wouldn’t be registrable. (There are exceptions for shapes that have acquired distinctiveness, like the Coca-Cola bottle)

3. Deceptive or Misleading Marks:

• Marks that are likely to mislead consumers about the nature, quality, or origin of the goods/services. For example, a trademark for woolen clothing that uses a picture of a sheep if the clothing is actually made of synthetic materials.

4. Offensive or Scandalous Marks:

• Marks that are considered offensive, vulgar, or morally unacceptable to a significant segment of the population. This includes symbols or language that could be deemed discriminatory or hateful.

5. Marks prohibited under other Laws:

• Marks that use emblems, names, or symbols protected under other laws, such as national flags, religious symbols, or government agency logos.

6. Marks Likely to Cause Confusion:

• Marks that are too similar to existing registered trademarks for identical or similar goods/services, leading to a likelihood of consumer confusion about the source of the products.

7. Well-Known Marks:

• Even if not registered in India, a mark that is well-known worldwide for a specific product category can block the registration of a similar mark for the same goods/services.

8. Names as Trademarks (with Limitations):

• Generally, your own name alone wouldn’t be registrable unless it has acquired distinctiveness as a trademark for your specific business. However, a combination of your name with a logo or design element might be registrable.

Additional Considerations:

• This is not an exhaustive list, and the specific reasons for refusing a trademark application can be complex.
• Consulting a trademark attorney is recommended to assess the registrability of your specific mark and navigate the application process.

By understanding these limitations, you can avoid wasting time and resources on pursuing trademarks that are unlikely to be registered in India.