What every businessmen should know about trademarks and service marks

Trade Marks and Service Marks are primarily used to distinguish goods/services of one trader from those of another and prevent confusion. A trade mark /service mark is identified with the business and sets it apart from other competitors. It generates goodwill and reputation for the business by virtue of its quality and distinctiveness.

Selection of a mark: The mistakes the owner makes while selecting or using a trade mark / service mark can result in loss of business and expenses.

The first step every business should take is to be very careful in selecting a trade mark / service mark.

-avoid marks that are descriptive or generic

-avoid surnames

-avoid marks that are similar to other marks

-avoid geographical names like Mumbai

-avoid laudatory words like best, good

-avoid words that have a direct reference to the character or quality or kind (extra large, small) or purpose (slim and fit for slimming products or rust free for paint) of the product

-avoid numerals like 20, 12

-avoid marks that are commonly used in the trade in respect of the said goods/services

-avoid misspellings like Xtra for Extra. If Extra is objectionable, Xtra will also be objectionable

-select a mark that is easy to pronounce and remember

-avoid marks that contain scandalous or obscene matter

-avoid marks that are specifically prohibited from registration

This list is not, however, exhaustive.

Types of marks:

Generic marks are those that are names of the product or service itself and cannot be used to distinguish one person’s goods/services from those of another. Such marks can never be protected eg. Ice-cream for ice-cream.

Descriptive marks are those that describe the product or the services offered under the mark. Normally the first instinct is to select a mark that describes the nature of the business as the owner feel that the consumer will immediately relate to it. These are extremely weak marks and may never pass the threshold for registration. Eg. Creamy for ice-cream

Fanciful marks are considered the strongest marks and give the best protection. These marks do not have any dictionary meaning and are unknown in any language eg. Kodak.

Arbitrary marks are also strong marks and comprise of words that are commonly used but do not describe the products or services or its quality or characteristics.eg. Apple for computers.

Suggestive marks are not altogether descriptive but only suggest or make one think about what the products or service might be. eg. Airbus.

Ownership of a Mark: How does a person acquire ownership of a mark? Ownership can be acquired in different ways – by registration, by purchase, by use, by inheritance, etc.

Once a mark is registered it is valid for a period of 10 years from the date of filing of the application for registration. The mark can be renewed indefinitely for a period of 10 years at a time.

Trade Mark rights are territorial, which means that protection is available in the country where the mark is registered or used.

Protection of a mark: is very crucial to every business since it represents the the goodwill, brand value and reputation of the business. Protection is important to safeguard against infringers and dilution of the mark. When unauthorized use of a mark by someone other than the proprietor results in confusion or diminishes or tarnishes its image, it causes the mark to be diluted. If left unchecked, dilution of a mark can ultimately result in its death and loss in of business.

If you are confused or require any additional information you may visit our website www.rgajria.com for more information or contact us to talk to one of our experienced attorneys.

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