Choosing the Right Trademark: Why it Matters and How to Do it Right
Selecting the right trademark is a pivotal step for any business aiming to establish a strong brand identity. With courts increasingly emphasizing the strength of trademarks, it becomes critical for businesses to choose marks that not only align with their brand vision but also hold up legally. The importance of a well-thought-out trademark is often highlighted in cases where its strength directly influenced the outcome.
One example of this is a case involving the word Imperial for alcoholic beverages. As analyzed in Fenil’s post, “Could Exclusivity Be Claimed Over the Word Imperial for Alcohols?”, the court ruled that exclusivity could not be granted for the word Imperial in this context. This was because the term is commonly used by many alcohol manufacturers and conveys a laudatory meaning of grandeur, thus lacking the necessary distinctiveness for trademark protection.
The Stakes of Choosing the Right Trademark
In today’s world, where brand development often involves significant investments, choosing the wrong trademark can result in dire consequences. Businesses may find themselves in legal disputes or unable to secure exclusive rights to their brand names. If a company discovers that its trademark cannot be protected or used exclusively, the financial and strategic repercussions can be severe. The time, effort, and resources poured into building the brand may be rendered meaningless.
This underscores the importance of selecting a trademark that is both distinctive and legally defensible. But how does one go about making the right choice?
What Makes a Trademark “Right”?
The Indian Trade Marks Act, 1999, provides a broad definition of a trademark. According to Section 2(1)(m), a trademark can include a variety of elements such as words, names, symbols, designs, packaging, or even a combination of colors. However, Section 9 of the Act specifies that a trademark must possess distinctive character and should not merely describe the goods or services it represents.
While the Act lays down general guidelines, it does not offer a precise explanation of what constitutes “distinctiveness.” To better understand this, it is helpful to refer to international frameworks, such as the U.S. Trademark Law, which provides valuable insights into the concept of distinctiveness.
Read Meanwhile: Adidas vs. Jai Prakash: Trademark Infringement Case Analysis
The Abercrombie & Fitch Hierarchy of Trademarks
The landmark case Abercrombie & Fitch Co. v. Hunting World Inc. introduced a classification system for trademarks, now widely known as the Abercrombie & Fitch hierarchy. This system categorizes trademarks into five levels of distinctiveness:
1. Generic Marks
Generic marks refer to terms that have become synonymous with the general category of goods or services they represent. These marks lack any distinctiveness and are not eligible for trademark protection. For example, the term Xerox has become so commonly associated with photocopying that it is no longer distinctive.
2. Descriptive Marks
Descriptive marks provide information about the goods or services, such as their quality, quantity, or features. These marks are not inherently distinctive but may gain protection if they acquire secondary meaning over time. An example is Café Coffee Day, which describes a coffee shop but has gained distinctiveness through extensive use and recognition.
3. Suggestive Marks
Suggestive marks require some imagination or thought to connect the mark with the nature of the goods or services. These marks are inherently distinctive and eligible for protection, though they rank lower on the distinctiveness scale. For instance, 7-Eleven for a store that operates from 7 a.m. to 11 p.m. is suggestive.
4. Arbitrary Marks
Arbitrary marks use common words in unrelated contexts. These marks have no direct connection to the goods or services they represent, making them highly distinctive. An example is Apple for computers, where the word “apple” has no direct relation to the product.
5. Fanciful Marks
Fanciful marks are completely invented or coined words with no existing meaning. These marks are considered the most distinctive and are highly likely to be protected. For example, Kodak is a fanciful mark that holds strong trademark protection.
Practical Takeaways for Choosing a Trademark
Based on the above categories, it is evident that distinctiveness plays a crucial role in determining the strength of a trademark. When choosing a new mark, businesses should aim for something that is:
- Memorable: A trademark should be catchy and easy to recall.
- Legally Defensible: It must meet the legal criteria for distinctiveness and avoid generic or overly descriptive terms.
- Unique: The mark should stand out in the market and not overlap with existing trademarks in the same industry.
In addition to these considerations, it is essential to conduct thorough research and trademark searches to ensure that the chosen mark does not infringe on existing rights.
Conclusion
A strong trademark is more than just a catchy name or logo—it is a critical asset that can define a brand’s identity and protect its market position. By understanding the principles of distinctiveness and the legal frameworks governing trademarks, businesses can make informed decisions when selecting marks. Whether opting for a suggestive, arbitrary, or fanciful mark, prioritizing distinctiveness ensures long-term brand protection and success.
Check your trademark on the Register.
