Trademark Act 1999 | IIPRD Blog - Intellectual Property Discussions

INTRODUCTION

The matter at hand involves an appeal coming from the Senior Examiner at the Registrar of Trademarks’ office rejecting a trademark application. This appeal is covered by Section 91 of the Trade Marks Act of 1999. Ticona Polymers intended to register the term “COOLPOLY” for two product categories, however their application was denied for two reasons: the proposed mark lacked distinguishing characteristics, and the words within the mark were deemed descriptive of the product.

WHAT IS A TRADEMARK?

According to Section 2(1)(zb) of the Trade Marks Act, 1999, a trademark is defined as a symbol that may be graphically expressed and has the ability to differentiate one individual’s products or services from those offered by others. This broad category of trademarks includes signatures, names, labels, headers, and other features.

WHAT IS DISTINCTIVENESS AND DESCRIPTIVENESS IN TRADEMARKS?

Section 9(1) of the Trade Marks Act of 1999 explains the absolute reasons for rejecting a trademark application, stating unequivocally that a mark that clearly describes the characteristics or features of products and services is ineligible for trademark registration. Nevertheless, Section 9(1) not only enforces a complete ban on registering descriptive marks but also incorporates a provision that permits such marks to be registered if they have acquired distinct recognition through previous use or are recognized as well-known trademarks.

FACTS OF THE CASE

The case revolves around an appeal to the Delhi High Court under Section 91 of the Act, stemming from a trademark application rejection. In this application, the appellant sought to register the term “COOLPOLY” for two specific classes of products: Class 1, which pertains to plastic and carbon molding materials used for creating molded plastic items, and Class 9, encompassing molded heat sinks for computers, their components, and molded electrical conductors. The Senior Examiner at the Registrar of Trade Marks’ office declined this application on October 26, 2020. The primary grounds for rejection were objections raised under Sections 9(1)(a) and 11(1) of the Trade Marks Act. These objections focused on the distinctiveness of the mark and the availability of equivalent marks in the trademark registration.

APPELLANT’S CONTENTIONS

The legal counsel for the appellant stated that the well-established policy of not dissecting a trademark into its many components during the registration review is widely acknowledged. Although Section 17(1) of the Trademarks Act clearly indicates that this idea pertains to cases of trademark infringement, it also applies to evaluating registration eligibility with required adjustments. Because the act of registering contains inherent benefits such as protection against infringement, the principle also applies in this case.

RESPONDENT’S CONTENTIONS

According to the respondent’s legal counsels, it is well-established legal principle that a simple combination of two common phrases or abbreviations, even if never before used, cannot be regarded a newly coined phrase. The terms in question in this case were “COOL” and “POLY.” This principle holds as long as the combined phrase conveys an identical meaning to the average individual, whether through visual or auditory means, as the separate words in their regular form. This principle had been upheld in prior legal cases, including E. Griffiths Hughes Ltd. v. Vick Chemical Co. and A.R. Khaleel And Sons v. Registrar of Trade Marks In India.

DELHI HIGH COURT’S OBSERVATIONS

In delivering its judgment, Justice Hari Shankar of the Delhi High Court underscored a fundamental principle: the assessment of a trademark should consider it as a cohesive entity rather than disassembling it into its constituent parts. This principle, firmly grounded in Indian trademark law, is not confined solely to cases of trademark infringement but also extends to the stage of trademark registration.

With regard to the specific trademark under scrutiny, “COOLPOLY,” the court noted that this term lacks any apparent meaning within the English language and does not constitute a commonly used word. Consequently, it retains the capability to differentiate between the products of one entity and those of another if utilized as a trademark. The court also pointed out that the Registrar’s decision lacked clarification regarding the mark’s distinctiveness. Additionally, the court argued that even if the issue of descriptiveness had been raised, it would not be valid because “COOLPOLY” is a unique, newly coined word. Even when examining the words “COOL” and “POLY” individually, they do not describe the products covered by the Appellant’s application, such as plastic and carbon molding materials, in any way.

Consequently, the court overturned the Registrar’s decision, asserting that the Chief Examiner’s rationale for rejecting the mark lacked a legal foundation. The court instructed the Registrar to ensure the publication of the “COOLPOLY” trademark application in the Journal of Trade Marks.

ANALYSIS AND CONCLUSION

The “COOLPOLY” trademark case underscores the vital importance of evaluating trademarks as whole entities within the domain of intellectual property law. At the core of this ruling lies the Delhi HC’s firm support for the anti-dissection doctrine, affirming that trademarks must be evaluated as unified entities rather than deconstructing them into their constituent parts. The court’s decision in favour of the “COOLPOLY” trademark underscores the word’s absence of inherent meaning within the English language, a pivotal element in trademark distinctiveness. Significantly, the court rejects the idea of descriptiveness by asserting that “COOLPOLY” constitutes a freshly minted term. Even when examining its individual elements, “COOL” and “POLY,” they do not depict the goods encompassed in the application. This verdict not only reaffirms the necessity of holistic trademark evaluation but also highlights the broader role of trademarks in preserving the distinctiveness of brands and fostering innovation in the marketplace.

Author : Manya Manohar, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at IIPRD.

REFERENCES

Ticona Polymers, Inc. Vs. Registrar of Trademarks, 2023 SCC OnLine Del 1234
The Trademarks Act, 1999
E. Griffiths Hughes Ltd. v. Vick Chemical Co., AIR 1959 Cal 654
A.R. Khaleel And Sons v. Registrar of Trade Marks In India, AIR 1963 Mys 122
https://cleartax.in/s/trademark-act-1999

INTRODUCTION

Trademark rights are actually established by using the trademark in commercial purposes, not by registering it formally; however, trademark rights can be significantly enhanced by registering them under the Trademark Act, 1999. Since the originality and source of the majority of the product can only be verified through its trademark on the product. It can be said that many people have a rough idea about the trademark is but they are not aware about the various types of the trademark available. Herein how to identify a trademark with regards to its various types has been explained. Also how to know whether the trademark is registered yet in India or not has been explained.

IDENTIFICATION OF TRADEMARKS

Every trademark is protected by the Intellectual property rights in India. Trademark consists of a special symbol, design or any expression that helps identifies or rectifies the product and its services of the company. A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises.[i] The word ‘mark’ has been defined under Trademark Act, 1999 as a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof. But to protect our trademark from being used or exploited it has to be registration then only we any avail the remedies available to us. Trademark can be registered under Section 18 to Section 23 of the Trademark Act, 1999. The application for trademark can be filed and the mark ‘TM’ can be used until it’s registered. And the once the mark is registered the ‘®’ can be used. The registered trademark is valid for 10 years and can be used by the proprietor for 10 years, which can be renewed from time to time on the discretion of the proprietor. All though there are many types of Trademarks but their purpose is the same which helps to determine the originality and authentication of the product.

[Image Sources : Shutterstock]

Since everyone by having a look at the trademark can say whether it is trademark or not but we cannot easily distinguish in between several of trademark. But by understanding various types of trademark we can distinguish between them. There are several of types of trademarks which can be registered like product mark, certification mark, shape mark, service mark, collective mark, sound mark and pattern mark, some of them explained in detail as below:

PRODUCT MARK: Product trademark are those which are attached to identify the goods in short they are affixed to it. Product trademark are used on a product rather than any service. The product mark on any product helps us to identify the originality of the good and this mark helps the company to maintain its band name which helps the company to distinguish their product from the other manufacturers in the market. Herein this mark helps the company to preserve its goodwill and reputation of the brand. Trademark applications filed under class 1 to class 34 of the trademark rules as defined as product trademark, as these classes represent goods and its forms. Example: Nestle Gold coffee, a special gold kind of symbol is used by the company to showcase its uniqueness, and this mark is also affixed to only that product itself.

SERVICE MARK: A service mark is used to rectify the service of the mark holder like it identifies the source of the product. Service mark is used to represent a service rather than the product, like what is the service provider for that product or good. A service mark distinguishes the services of proprietor from that of other service providers. They represent the service particularly offered by that business and not of any specific good. A service mark may be present on various goods at a time as per the diversification of good possessed by the company. Trademark application registered under class 35 to class 45 of the trademark rules can be defined as service marks, as these classes represent service. Example: Honda bikes mark is a service logo which is used by them on several bike models of the Honda and also it represent the brand name of the company.

COLLECTIVE MARK: Collective marks can be defined as the marks which are collectively registered by a group of companies; organisation or association is collectively used by them and can be protected collectively by them. Collective mark is used by more than one trader at a time. Collective marks can also be used to promote particular or similar products which have certain characteristics specific to the producer in similar field. The standards of the product are all fixed by the regulators or mark exercisers altogether. Example: The designation of Chartered Accountant represents a Collective Mark.

CERTIFICATION MARK: A Certification Mark marks denotes the originality, material and quality of the good or the product. The main purpose of the Certification Mark is to bring out and determine the standardization of the good and guarantee the source of the product. Certification Mark denotes the standard to the good. The resemblance of a Certification Mark on the products denotes that the product has undergone various standard tests and the brand can be trusted since the quality of the product has been verified by the concerned authorities. This guarantees the consumer that the good has went to various audits and process and number to tests to prove it authenticity to ensure the desired quality of the product. Food products, electrical appliances, toys have a Certification Mark over them. Example: FSSAI over any packed food essential defines it quality and people do consider buying the product blind eye over the presence of the FSSAI mark.

SHAPE MARK: When the shape and packaging of the products is unique and has distinctive features can be registered as a trademark. This specific shape of any product helps the consumer to distinguish the product from other manufactures. Since a mere representation of the good in from of the shape or packaging also helps in recognising our preferred brand. Example: the shape of a coca cola or Fanta bottle can easily be distinguished from all other manufacturers on its graphical appearance and thereof. Also many packaging brands prefer different kind of packaging from other brand to stand out of box with other goods are compared to their goods, example; the packing of kinderjoy is different as compared to other chocolate brands and his competitors which makes them look unique and easy to recognize for the consumers.

SOUND MARK: A sound, tune or melody with a distinctive recognition feature can be registered as a sound mark. Sound mark is most of the times registered as used in advertisement purpose or in commercial ads form. A sound logo is short tune or melody played at the start or in the end of any commercials or method of advertisement. Sound logos are also referred as audio mnemonic. Example; the IPL tune which is played in every IPL match, on hearing the tune it is easy to co-relate the clip being played is of the match or is related to cricket match. Yahoo Yodel was the sound mark to be registered in India under trademark in the August 2008.

CONCLUSION

For trademarks that are not registered under the act, the ™ symbol can be used to give notice to the consumers and business competitors that trademark rights are claimed in a brand name or under the logo. The ® symbol will not only protect the trademark’s owner against trademark infringement by any person or an entity but also gives an indication that name or logo is registered under the trademark Act, 1999 in India.

Identifying or recognising a trademark on products or services is as simple as finding identifying the name, logo, or symbol that denotes the source of the goods or services on packaging, in advertising, or on a sign. The likelihood that a name, logo, or other symbol is a trademark increases with distinctiveness. Although a trademark need not be identified by any particular words or symbols, certain designations can be used in conjunction with a trademark to show that the provider of the products or services is the proprietor of the trademark.

Author: Vaibhav Ramdas Misal is 4^th year student at Maharashtra National Law University, Aurangabad, in case of any queries please contact/write back to us at via email chhavi@khuranaandkhurana.com & IIPRD

REFRENCES

[i] WIPO

https://www.wipo.int/trademarks/en/