What Cannot Trademark in India | Do Not Make These Mistakes

 

With increased competition in the business world, it can be difficult to come up with a trademark that is both original, accepted by the law and related to your company's goals. So, it can be hard to figure out what can and what cannot trademark in India.

But first, let's define a trademark.

A trademark is a name, initials, or logo that distinguishes a product or service. Read the following article if you're looking for information on trademark registration online and figure out what doesn't qualify for trademark registration. 

 

You Cannot Trademark it in India

The following items qualify as grounds for trademark refusal, which means a company cannot use them as a trademark symbol, logo, or name.

 

1. Lacking a Unique Characteristic

Nothing generic may be registered because the sole point of trademark registration is to distinguish between different brands. 

Section 9(1)(b) of the Trademarks Act of 1999 prohibits the registration of generic trademarks. Apple, for example, is a common word that derives its distinctiveness from its association with a computer corporation and thus qualifies for trademark protection.

 

2. Your given name and surname

In India, names and surnames cannot be used to register trademarks, especially if they lack distinctiveness and are used unlawfully. 

In the matter of Pratibha M. Singh v Singh Associates (2014), the court determined that because Singh is such a popular surname, it cannot be reserved for a trademark by a single person.

 

3. The use of colour

Though the Trademarks Act of 1999 does not ban the use of colours as a trademark, the Indian Registry and Courts have declined colour use as a trademark due to the risk of "colour deprivation," which might result in a backlog of court cases. 

It's crucial to realise that a brand's colour is not the same as a colour trademark. Cadbury's purple colour, for example, is protected by a trademark that is solely applicable to chocolate products and can be utilised by other businesses.

 

4. Use of Numbers 

In India, numerals do not qualify for trademark protection. They are disqualified because they lack a distinctive character, which is the most crucial characteristic of a trademark.

 

5. Sound 

'Factual Distinctiveness' is a requirement that must be met before a specific sound can be registered as a trademark. 

The quick recall value of sound in relation to the product or service is referred to as factual uniqueness. For example, Lion Roar by Metro Goldwyn Mayer (MGM) is a classic example of a sound mark.

 

6. Location of the Business

A trademark cannot be registered using the name of a town, city, or any other geographical location. 

In Imperial Tobacco Company of India Ltd. vs. Registrar of Trademarks (1968), the Calcutta High Court rejected the use of "Simla" as a trademark because it was composite in character because it is a popular hill station in India.

 

7. Take a whiff

Because distinct fragrances are difficult to discern and subjective in nature, they are ineligible for trademark protection.

 

8. Features of the products or services

The mark cannot be applied for trademark registration online if there is any indication that serves in the trade to designate the sort, quality, amount, intended purpose, values, geographical origin, time of production of the goods, rendering of the service, other features of the goods or service. 

The Intellectual Property Appellate Board [IPAB] concluded in ELGI Ultra Industries Limited v The Assistant Registrar of Trade Marks, MANU/IC/0062/2008, that "the phrases "ultra" and "perfect" are extremely descriptive and laudatory." They are not to be considered trademarks."

 

9. Customary

Trademarks that are of marks or indications that have a commonplace in today's language or legitimate and well-establishing trade practices are not eligible for registration. For example, Otis' trademark "Escalator" for moving staircases has become a generic phrase, and the Trademark Office has ruled that Otis cannot use the mark since it has become commonplace in the context of moving stairs.

 

10. Deceitful

The public should not be misled by a trademark. For example, if a company starts making biscuits under the name Parle-J, it is infringing on Parle-rights G's because it is highly deceptive.

Under the Indian Patent Act of 1970, the patent law in India has been expanded to include the protection of businesses as well as actual scientific inventions. As a result, a successful trademark registration protects a brand from infringement.

 

11. Harming Religious Feelings 

Certain marks will no longer be regarded trademarks if they offend a person's religious beliefs.

The appellant had applied for registration of the mark "Ramayan" with the device of a crown in respect to incense sticks and perfumeries in the matter of Lal Babu Priyadarshi v. Amrit Pal Singh (Civil Appeal No. 2138 of 2006, Supreme Court). "No one can claim the name of a holy scripture as a trademark," the court said.

 

12. Controversial Situation

The mark which is to trademark should not be scandalous or indecent in any way.

The Emblems and Names (Prevention of Inappropriate Use) Act of 1950 prohibits it.

A mark may not be used as a trademark if its use is forbidden by the aforementioned act.

 

13. The shape of the goods

The Trade Marks Act of 1999, Section 9(3), states:

If a mark comprises of the following — it cannot register as a trademark.

• The shape of things that are determined by the nature of the commodities; or
• The shape of goods required to achieve a technical outcome; or
• The shape of the item adds significant value to it.

The shape of Vanilla ice cream, for example, was not registered as a trademark because of the product's nature.

 

14. Products that are identical or comparable

Any mark that is confusingly similar to an earlier mark is ineligible for use as a trademark for a new product. TATA Motors, for example, cannot assign as a trademark again. There should be no advantage to one party over another.

 

15. In violation of the law

If a law of passing off protects an unregistered trademark, it cannot utilise as a trademark by anybody else.