Unit 2 - Notes

LAW352 11 min read

Unit 2: Creation of trademark

The Distinctiveness Spectrum

The ability of a mark to be protected as a trademark is directly related to its "distinctiveness." Distinctiveness refers to the mark's capacity to identify the source of a particular good or service and distinguish it from the goods or services of others. Courts and trademark offices evaluate this on a spectrum, which dictates the strength and registrability of the mark.

The spectrum, from strongest (most protectable) to weakest (least/not protectable), is as follows:

TEXT

  STRONGEST <--------------------------------------------------------> WEAKEST
 Fanciful  ->  Arbitrary  ->  Suggestive  ->  Descriptive  ->  Generic
  (Inherent Distinctiveness)                (Requires Acquired      (Not Protectable)
                                             Distinctiveness)

1. Fanciful Marks

Definition: These are invented words or symbols that have no meaning other than their use as a trademark. They are coined specifically for the purpose of being a brand.
Strength: Strongest and most distinctive type of mark. They enjoy the broadest scope of legal protection from the moment of their first use.
Registrability: Immediately registrable without any need to show secondary meaning.
Examples:
- KODAK for cameras
- XEROX for copiers
- EXXON for petroleum products
- PEPSI for soft drinks

2. Arbitrary Marks

Definition: These are real words or symbols with a known meaning, but that meaning is completely unrelated or "arbitrary" in relation to the goods or services they are applied to.
Strength: Very strong and highly distinctive, second only to fanciful marks.
Registrability: Immediately registrable. The public is unlikely to associate the word's dictionary meaning with the product, so it functions well as a source identifier.
Examples:
- APPLE for computers
- CAMEL for cigarettes
- AMAZON for online retail
- SHELL for gasoline

3. Suggestive Marks

Definition: These marks hint at or suggest a quality, characteristic, or ingredient of the goods or services without directly describing it. They require some imagination, thought, or perception on the part of the consumer to reach a conclusion about the nature of the goods.
Strength: Considered inherently distinctive but are weaker than fanciful or arbitrary marks.
Registrability: Registrable without proof of secondary meaning. The line between "suggestive" and "descriptive" is often difficult to draw and is a common point of legal contention.
Examples:
- NETFLIX for streaming services (suggests movies/shows over the internet)
- AIRBUS for airplanes
- MICROSOFT for software for microcomputers
- COPPERTONE for suntan lotion (suggests the color of a tan)

4. Descriptive Marks

Definition: These marks directly and immediately describe an ingredient, quality, characteristic, function, feature, purpose, or use of the goods or services. They may also be geographically descriptive or be a personal surname.
Strength: Not inherently distinctive. They are considered weak marks.
Registrability: Not registrable on the Principal Register unless they have acquired "secondary meaning" or "acquired distinctiveness." The policy is to prevent one company from monopolizing words that competitors may need to use to describe their own products.
Examples:
- WORLD BOOK for encyclopedias
- AMERICAN AIRLINES for an airline based in America
- COMPUTERLAND for a computer store
- CHAPSTICK for a lip balm in a stick form

5. Generic Marks

Definition: A generic mark is the common, everyday name for the goods or services themselves. It answers the question "What is it?".
Strength: Zero. They have no distinctiveness.
Registrability: Cannot be registered as a trademark under any circumstances. Allowing one company to own the generic name for a product would give them an unfair monopoly and prevent competitors from being able to describe what they are selling.
Examples:
- ASPIRIN for pain relief medication (originally a trademark, now generic in the US)
- ESCALATOR for moving stairs (originally a trademark)
- COMPUTER for a computer
- SHOE for footwear

Concept of Acquired Distinctiveness and Generic Marks

Acquired Distinctiveness (Secondary Meaning)

Concept: A descriptive mark, which is not inherently distinctive, can become a protectable trademark if it has acquired distinctiveness through extensive use in the marketplace. This is also known as "secondary meaning."
Mechanism: Secondary meaning is achieved when consumers, upon seeing or hearing the mark, no longer think of the descriptive dictionary meaning of the words but instead associate it with a single source or producer. The primary meaning (descriptive) becomes secondary to the trademark meaning (source-identifying).
Proving Acquired Distinctiveness: A business must provide substantial evidence to the trademark office to prove that secondary meaning has been established. This can include:
1. Long and Exclusive Use: Evidence of continuous and substantially exclusive use of the mark for a significant period (e.g., in many jurisdictions, five years of use is considered prima facie evidence).
2. Extensive Sales and Advertising: High sales figures and significant expenditure on advertising and promotion of the mark.
3. Consumer Surveys: Direct evidence from the relevant public showing a high degree of brand recognition.
4. Media Recognition: Unsolicited media coverage and reviews recognizing the mark as a brand.
Example:
- AMERICAN AIRLINES: Initially descriptive of an airline operating in America. Through decades of extensive use, advertising, and brand building, consumers now associate this name with a specific company, not just any American airline. It has acquired distinctiveness.

Generic Marks and Genericide

The Rule: A generic term can never become a trademark because it is the name of the product class itself. It cannot distinguish the goods of one seller from another.
Genericide: This is the process through which a once-strong and protected trademark loses its distinctiveness and becomes the common, generic term for a category of products or services. This is often a result of the trademark owner's own success and failure to properly manage the mark.
Causes of Genericide:
- The mark becomes so popular that the public begins to use it as the name for the product itself, regardless of the producer.
- The trademark owner fails to police the mark by allowing competitors and the public to use it in a generic sense.
How to Prevent Genericide:
- Always use the mark as an adjective, not a noun or a verb (e.g., "a XEROX brand copier," not "a xerox").
- Use a generic term after the trademark (e.g., "KLEENEX brand tissues").
- Use the ® or ™ symbols.
- Actively police the mark by sending cease-and-desist letters to those who use it improperly.
Examples of Genericide:
- Aspirin
- Escalator
- Thermos
- Cellophane
- Trampoline

Bars to Protection: Grounds for Refusal of Registration

Even if a mark possesses some level of distinctiveness, it may still be refused registration if it falls under certain statutory prohibitions. These bars are categorized into "absolute grounds" and "relative grounds."

Absolute Grounds for Refusal

Absolute grounds relate to the inherent qualities of the trademark itself, irrespective of any pre-existing rights of third parties. The mark is examined on its own merits. (In India, these are primarily covered under Section 9 of the Trade Marks Act, 1999).

Marks Devoid of any Distinctive Character:
- This is a fundamental objection. It applies to marks that are not capable of distinguishing the goods/services of one person from another. This directly relates to the lower end of the distinctiveness spectrum (descriptive and generic marks).
- Example: The word "SOAP" for soap.
Marks Exclusively Indicating Kind, Quality, Quantity, etc.:
- Marks that consist exclusively of signs or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin, or the time of production of goods or rendering of the service.
- Example: "BEST QUALITY" for clothing or "DELHI" for rice produced in Delhi.
- Proviso: This objection can be overcome if the mark has acquired a distinctive character (secondary meaning) as a result of its use before the date of application.
Marks Consisting of Customary Signs or Language:
- Marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade.
- Example: The term "HIGH-DEF" for televisions.
Marks Likely to Deceive the Public or Cause Confusion:
- This applies to marks that are deceptive as to the nature, quality, or geographical origin of the goods or services.
- Example: Using the mark "PURE WOOL" on a product made of synthetic fibers.
Marks Containing Matter Likely to Hurt Religious Susceptibilities:
- Marks that comprise or contain matter which is likely to hurt the religious susceptibilities of any class or section of the citizens of the country.
- Example: Using the image of a deity on an inappropriate product like footwear.
Scandalous or Obscene Matter:
- Marks which comprise or contain scandalous or obscene matter or are contrary to public order or morality.
- Example: A mark containing a profane word or an offensive image.
Marks Prohibited under the Emblems and Names Act:
- Use of national flags, emblems, names of international organizations (e.g., WHO, UN), or other official insignia is prohibited.
Marks Consisting Exclusively of the Shape of Goods:
- A shape cannot be registered as a trademark if it:
  - Results from the nature of the goods themselves (e.g., the shape of a standard football).
  - Is necessary to obtain a technical result (functionality doctrine; should be protected by patent, not trademark).
  - Gives substantial value to the goods (aesthetic functionality; should be protected by design rights).
- Example: The functional three-headed design of an electric shaver. However, the unique shape of a Coca-Cola bottle is registrable as it serves no functional purpose and has acquired distinctiveness.

Relative Grounds for Refusal

Relative grounds for refusal are based on a conflict between the mark being applied for and an earlier, pre-existing right belonging to a third party. The mark is not examined in a vacuum but in relation to what already exists. (In India, these are primarily covered under Section 11 of the Trade Marks Act, 1999).

The core principle is to prevent a likelihood of confusion on the part of the public.

Key Grounds:

Identity with an Earlier Mark and Identity of Goods/Services:
- Condition: The applied-for mark is identical to an earlier registered trademark, AND the goods/services are also identical.
- Outcome: Registration is refused outright. Confusion is presumed.
- Example: A new company trying to register "SONY" for televisions when Sony Corporation already holds that registration.
Similarity to an Earlier Mark and Identity/Similarity of Goods/Services:
- Condition: There exists a likelihood of confusion on the part of the public because:
  - The applied-for mark is identical to an earlier mark, but the goods/services are only similar (not identical).
  - The applied-for mark is similar to an earlier mark, and the goods/services are identical or similar.
- The Likelihood of Confusion Test: This is the central analysis. Courts and registrars consider several factors:
  - Similarity of Marks: Assessed visually (sight), phonetically (sound), and conceptually (meaning/idea).
  - Similarity of Goods/Services: Whether the goods/services are of the same type, used by the same consumers, sold through the same trade channels, or are complementary.
  - Strength of the Earlier Mark: Well-known and highly distinctive marks are given a broader scope of protection.
  - The Consumer: The level of care a typical consumer would exercise when purchasing the goods/services in question.
- Example: A company trying to register "KOKA-KOLA" for soft drinks would be refused due to its similarity to "COCA-COLA." A mark like "SASON" for televisions might be refused due to phonetic similarity to "SAMSUNG."
Protection for Well-Known Trademarks:
- Condition: The applied-for mark is identical or similar to an earlier trademark that is "well-known" in the jurisdiction, even if the goods/services are not similar.
- Rationale: To prevent dilution (blurring or tarnishment) of the famous mark and to prevent the applicant from taking unfair advantage of the repute of the well-known mark.
- Outcome: Registration is refused if the use of the later mark would be detrimental to the distinctive character or repute of the well-known trademark.
- Example: An attempt to register "ROLEX" for chocolates would likely be refused because it would take unfair advantage of the reputation of the famous watch brand.
Passing Off:
- Even if a mark is not registered, its use can be prevented under the common law tort of passing off.
- Condition: An unregistered mark can be used to oppose or refuse a later application if the prior user can establish:
  1. Goodwill/Reputation: They have established goodwill in their mark.
  2. Misrepresentation: The applicant's use of their mark amounts to a misrepresentation that is likely to deceive the public into believing their goods are connected with the prior user.
  3. Damage: The prior user has suffered or is likely to suffer damage to their goodwill as a result.

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