Understanding Trademark Protection in India: What Can and Can’t Be Trademarked

What Can and Cannot Be Trademarked in India - Intellect Vidhya

Registration of a business’s trademark is one of the most important steps that can be taken to protect a company’s identity as well as the reputation of its goods or services in the marketplace. In India, the Indian Trademark Act of 1999 governs the legal framework for trademark protection. This act specifies the criteria for registering trademarks and those that are ineligible for protection. This article explores what can and cannot be trademarked according to the Indian Trademark Act,1999.

Section 9: Absolute Grounds for Refusal of Trademark Registration

Section 9 of the Indian Trademark Act, 1999, enumerates the absolute grounds for refusal of trademark registration. These grounds identify categories of marks that are inherently incapable of being registered as trademarks in India. As per this this provision, trademark does not include any mark which is:

Devoid of Distinctive Character

Trademarks that lack distinctiveness or are generic or descriptive in nature are ineligible for registration. For example, the word “Computer” cannot be registered as a trademark for computer hardware, as it is a generic term. However, a distinctive and non-descriptive term like “Apple” can be registered as a trademark for a technology company.

Consisting Exclusively of Generic or Common Names

Trademarks that primarily consist of common or generic terms related to the goods or services offered cannot be registered. For instance, “Soap” cannot be registered as a trademark for a soap manufacturing company. However, a unique and distinct name like “Dove” can be registered as a trademark for a soap brand.

Customary in Current Language or Trade Practices

Trademarks that have become customary or usual in everyday language or trade practices are not registrable. This provision prevents the monopolization of common terms. For example, the term “Supermarket” cannot be registered as a trademark for a grocery store.

Likely to Deceive or Cause Confusion

Trademarks that are likely to deceive the public or cause confusion regarding the nature, quality, or origin of the goods or services are ineligible for registration. For instance, a mark that closely resembles an existing famous brand may cause confusion among consumers and therefore be refused registration.

Contrary to Law or Morality

Trademarks that are against public policy, offensive, or immoral are refused registration. This provision ensures that trademarks align with societal norms and values. For example, a mark containing explicit or offensive language would be rejected.

Section 11: Relative Grounds for Refusal of Trademark Registration

Section 11 of the Indian Trademark Act deals with the relative grounds for refusal of trademark registration. It focuses on the similarity or identity of the proposed mark with existing marks. Let’s understand this provision in more detail:

Under Section 11, a trademark application may be refused if it is identical or similar to an earlier registered trademark or pending application in the same or similar class of goods or services. The objective is to prevent confusion or misleading associations among consumers. The Registrar of Trademarks compares the proposed mark with existing marks and examines factors such as visual similarity, phonetic similarity, and conceptual similarity to determine the likelihood of confusion.

For instance, an online marketplace, Company M, intends to register the mark “eBayzy” for its e-commerce services. However, there is an existing registered mark for “eBay” owned by Company N, a well-known global online marketplace. Company M’s trademark application may be rejected under Section 11 due to the similarity and likelihood of confusion with the earlier registered mark.

What Can Be Trademarked?

The Act recognizes various forms of subject matter that are eligible for trademark protection. Let’s explore the different types of subject matter that can be trademarked:

Words, Names, and Slogans

One of the most common forms of trademarks is words or combinations of words that serve as brand identifiers. These can include brand names, product names, slogans, or catchphrases. Examples of word-based trademarks include “Google,” “Amazon,” “Just Do It” (Nike’s slogan), and “Think Different” (Apple’s slogan).

Logos and Designs

Trademarks can also take the form of logos, designs, symbols, or graphic elements. These visual representations serve as distinctive identifiers for businesses. Examples include the Nike “swoosh” logo, the Apple logo, the Mercedes-Benz three-pointed star emblem, and the Starbucks mermaid symbol.

Labels and Packaging

Distinctive labels and packaging designs can also be registered as trademarks. These help consumers identify specific products or brands based on their visual appearance. For example, the unique packaging of Toblerone chocolate bars, the curvaceous Coca-Cola bottle design, and the distinctive shape of the Pringles potato chip canister can be registered as trademarks.

Shape of Goods

Section 2(1)(zb) explicitly states that the shape of goods can be included as part of a trademark. This provision allows businesses to protect the distinctive shape of their products as a trademark. Notable examples include the unique shape of the Coca-Cola bottle, the iconic design of the Mini Cooper car, and the shape of the Toblerone chocolate bar.

Combinations of Colors

The Trademarks Act, 1999, recognizes that combinations of colors can also serve as trademarks. This provision allows businesses to protect unique color combinations associated with their brand. For instance, the specific red color used by Coca-Cola or the brown color associated with UPS can be registered as trademarks.

It is important to note that the mark must be capable of being represented graphically, meaning it can be visually depicted in a clear and understandable manner. Additionally, the mark must be capable of distinguishing the goods or services of one person or business from those of others. This means that the mark should possess distinctiveness and not be common or descriptive.

Conclusion

Trademark registration is a vital aspect of protecting the intellectual property rights of businesses. Under the Trademark Act, 1999, several types of trademarks are eligible for protection. It is crucial for businesses to understand these guidelines to ensure effective trademark protection and avoid potential conflicts. Seeking professional guidance and conducting a thorough trademark search before applying for registration can help businesses make informed decisions regarding their intellectual property rights in India.

Frequently Asked Questions

What can and can’t be trademarked in India?

In India, trademarks that can be registered include words, names, slogans, logos, designs, labels, packaging, shapes of goods, and combinations of colors. Non-distinctive or generic terms, descriptive marks, marks that are likely to cause confusion, deceptive marks, marks against public morality, and marks that are already in use or similar to existing registered marks cannot be trademarked. Additionally, marks that are contrary to law, government symbols, and marks that are devoid of distinctive character are also ineligible for trademark registration in India.

Can I trademark a common word?

Yes, it is possible to trademark a common word in India under certain conditions. While generic or commonly used words are generally considered less distinctive and harder to register as trademarks, it is still possible to obtain trademark protection for a common word if it is used in a unique or distinctive manner and has acquired secondary meaning associated with specific goods or services.

Can I trademark a color?

Yes, it is possible to trademark a color in India, but it can be a challenging process. In order to successfully register a color as a trademark, you must demonstrate that the color has acquired distinctiveness and is associated with your specific goods or services in the marketplace. You need to show that consumers recognize the color as an indicator of the source of the goods or services.

Can I trademark a misspelled word?

Yes, it is possible to trademark a misspelled word. The key consideration for trademark registration is the distinctiveness of the mark. If the misspelled word is unique and distinctive enough to differentiate your goods or services from others, it may be eligible for trademark protection.

Can two words be a part of single trademark?

Yes, it is possible for two words to be a part of a single trademark. Combining two or more words to create a distinctive and unique mark is a common practice in trademark registration.

Share:

Facebook
Twitter
LinkedIn
WhatsApp

Related Posts

Protecting Electric Vehicle Designs with Indian Design Patents

With the rapid growth of the electric vehicle (EV) market, protecting unique designs is crucial for manufacturers. Read this article to understand the importance of design patents in safeguarding EV innovations under Indian design law. IntroductionThe electric vehicles (EV) industry has seen an exponential growth whether it is technological advancements or environmental concern with sustainable mobility solutions. As creativity in the industry increases, safeguarding the unique designs of electric cars becomes essential. Design patents for electric vehicles are one of the best ways to protect the distinctive aesthetic and functional features seen in EVs. This article examines how electric vehicle manufacturers in India can use design patents to protect their innovations and provide a detailed overview of Indian design patent law, including the perspective of the Indian Design Patent Office. What is a Design Patent? A design patent protects the visual and ornamental features of the product, such as its shape, configuration, and general appearance of the product. Design patents cover the look of a product, compared with utility patents, which cover the functional aspects of an invention. For instance, design patents for electric vehicles can protect the overall shape of the vehicle, the layout of the dashboard, the design of seats, the look of the lighting elements, and any other visual features of the vehicle. Definition of “Design” under Indian Law According to the Designs Act, 2000, a design is defined as the “features of shape, configuration, pattern, ornament, or composition of lines or colors applied to any article, whether in two-dimensional or three-dimensional form, by any industrial process or means, including any known process or means.” Essentially, the design encompasses any visual aspect of an article that is aesthetically appealing and can be viewed by the eye. The design needs to be novel and industrially applicable. This means that it must be possible to reproduce it on a large scale using industrial processes, such as mass production techniques.” For EVs, the design could also include: Why are Design Patents Important for EV Manufacturers? Indian Design Patent Law In India, the protection of designs falls under the Designs Act, 2000, and the Designs Rules,2001. This legislation provides the legal framework for registering and protecting the visual and ornamental aspects of an article, including electric vehicles. The Designs Act allows for the registration of designs that are new, original, and have industrial application. Here are the key aspects of Indian Design Patent Law relevant to EV manufacturers: For the manufacturers of electric vehicles, this implies that there can be no replication of a single element whether it be the vehicle’s exterior, the dashboard or any other segment; it must be unique in its design. Design protection plays a significant role for the plaintiffs in sectors like the EV industry, where the visual attractiveness of a product is crucial to its viability. This prevents competitors from copying the unique features that make the manufacturer’s vehicle stand out in the market. Design patent strategies for EVs can ensure that unique features are protected from competitors copying successful elements in the marketplace. Role of the Indian Design Patent Office In India, designs are registered with the Indian Design Patent Office which operates under the aegis of the Office of the Controller General of Patents, Designs and Trademarks (CGPDTM). Its role is critical in the examination of design patents and in granting protection for intellectual property. The office acts a forum for adjudicating design-related disputes. The office provides various services, including: Conclusion With the EV sector blooming in India, the design of these electric vehicles now requires protection more than ever. The aesthetic features that distinguish an EV in the market are protected through electric vehicle design patents, which represent a powerful means of protection for these types of vehicles. This will also help to avoid a situation where Indian electric vehicle manufacturers spend considerable time creating innovative products with no recourse to patent protection to gain a competitive advantage. By effectively registering and safeguarding their distinctive designs, manufacturers can not only set their offerings apart but also establish a robust portfolio of intellectual property that will contribute to their sustainable growth in the fiercely competitive global EV landscape.

Read More »

How Design Patents Protect Automotive Innovations in India

Do you know how automotive companies in India protect their unique vehicle designs? Read this article to understand the importance of design patents, how to file one in India, and the step-by-step process to safeguard your automotive innovations. Introduction With the Indian Automotive industry moving at a fast pace, the one thing that defines the company’s standing is the innovation or uniqueness of the vehicle’s design. The rise in demand for new models and technology also calls for plenty of protection for these types of innovation. Designs play an important role in the attractiveness and branding of automotive goods and applications. In this article, we shall focus on how a design patent protects automotive innovations, the process to obtain one, and how it helps the automotive industry in India. What Is a Design Patent? Unlike utility patents, a design patent does not cover the way a product operates — it instead protects its appearance, including its shape, configuration and ornamentation. In the automotive world, this includes the exterior and interior styling of a vehicle, aka the car body, headlights, grill and dashboard, as well as the actual arrangement of the seats. Design patents differ from utility patents in that the latter protects the functional aspects of an invention, whereas design patents protect the aesthetic appeal of the product. Vehicle design patent protection in India is granted under the Indian Design Act, 2000 and the Design Rules, 2001, under which a framework exists for registration and protection of industrial designs. How Design Patents Protect Automotive Innovations in India In a country like India, where automotive design innovation is paramount in establishing product differentiation in a saturated space, a design patent ensures protection of the characteristics. Design patent protection for vehicles ensures that no other manufacturer can reproduce or imitate a car’s unique design without facing legal repercussions. A design patent allows automakers to stop the copying or replication of the design of their vehicle. This immunity is granted for 10 years and can be renewed. In a highly competitive space such as India, protecting market share as well as brand identity becomes crucial for automotive firms. How to File a Design Patent in India Filing a design patent in India involves a few systematic steps, ensuring that the innovation is properly registered and protected. Here’s how you can navigate the design patent application process in India for your vehicle design: Design Patent Requirements in India There are specific design patent requirements in India that applicants must meet: In the case of automotive companies, it becomes necessary for them to ensure that the design of the vehicle is concerned is compliant with these parameters before they can file for a design patent. Cost of Design Patent in India The cost of design patent in India varies depending on few factors such as the legal representation of the applicant, application fees & renewal fees. The filing fees for individuals and small entities are relatively low, making it an affordable option for automotive companies, especially startups or smaller players in the industry. The statutory filing fee for individual is approximately INR 1,000 and for a company, the cost may rise up to INR- 4,000 for each application. Steps to Obtain a Design Patent in India Here are the steps to obtain a design patent in India for a vehicle: Importance of Design Patent Protection for Vehicles In the Indian automotive industry, protecting design patents is important for encouraging innovation. It also assists car manufacturers to safeguard the time, effort, and money invested in designing their cars so that other manufacturers do not copy them. With most Indian consumers inclined toward vehicles with distinctive and attractive aesthetics, automakers need to safeguard their design identity. Furthermore, a design patent acts to protect the brand from counterfeit products flooding into the market, ensuring safety by preserving the integrity of the brand. It also provides automakers with the opportunity to distinguish themselves in a competitive market through the improved development and marketing of products with new and protected designs. Indian Design Patent Laws Indian design patent laws focus on protecting the ornamental or aesthetic qualities of industrial products, and the Indian Design Act is in alignment with international design protection standards. This allows the automakers in India to protect their vehicle designs and at the same time, apply for protection under the Hague System for international designs. ConclusionThe Indian automotive industry is highly competitive and a design patent is an important way to protect innovative designs for vehicles. Having a deep understanding of how the Design Patent application process works in India along with the requirements, cost, and steps is imperative for automotive companies to protect their Intellectual Property. As the Indian automobile market expands, the demand for design protection will only increase, and it presents a great deal of value for the creators and innovators of automotive designs. By filing a design patent in India, automotive companies can ensure that their creative innovations are well-protected, fostering a more vibrant and competitive automotive industry.

Read More »

Design or Patent? Securing Your Auto Innovations the Right Way

In the automobile industry, intellectual property (IP) is of utmost important in order to protect new ideas and technologies. Two key types of IP that are often discussed in the context of the automotive sector are design protection and patents. While these two serve different purposes, they often overlap, especially in the automobile sector. In this article, we will cover what design and patent protections are, how they work, where they overlap, and what challenges businesses face. What is Design Protection? Design refers to the look or aesthetics of a product. In the field of automobile industry, design protection can cover the external shape of a car, the design of its parts, or its internal features. Design protection aims to stop others copying the distinctive look of a product. The Design Act and Eligibility In India, design protection is governed by the Design Act, 2000. To qualify for design protection, the design must meet these requirements: What Can Be Protected as a Design in the Automobile Industry? In the automobile sector, you can protect many things as a design, including: For example, the shark fin antenna on luxury cars or the unique grille of sports cars are examples of designs that can be protected. What is a Patent? A patent protects inventions—novel, useful products or processes. In the automobile industry, patents typically protect technological innovations and mechanical systems that make a vehicle work better. The Patent Act and Eligibility In India, patents are governed by the Patents Act, 1970. To get a patent, the invention must meet these criteria: Protection Time for Patents Patents last for 20 years from the filing date, as long as you pay maintenance fees. After that, anyone can use the invention freely. What Can Be Patented in the Automobile Industry? In the automobile sector, patents can cover things like: For example, Tesla’s electric powertrain or BMW’s advanced braking systems are patented technologies. Overlap Between Design and Patent Protection Design and patent protections have different purposes, but they often overlap in the automobile industry. A single product, like a car, can be protected by both design and patent. Here’s how: Challenges of Overlapping Design and Patent While having both design and patent protection can be helpful, it also comes with challenges: How to File for Design and Patent Protection? Filing for both design and patent protection requires careful planning and understanding of the legal process. It’s important to work with a lawyer who knows how to handle both types of protection. Conclusion The interplay between design and patent protection in the automobile industry provides opportunities and challenges for companies that want to protect their innovations. However, it also comes with challenges like complexity and costs. By understanding the differences between design and patent protection, and with the help of expert legal guidance, businesses can better protect their innovations and stay ahead in the competitive automobile market. Contact Intellect Vidhya Solutions—your partner in protecting intellectual property for any questions or needed support in navigating the complexities of design and patent law.

Read More »

AI Voice Cloning and Its Copyright Legalities: The Arijit Singh Case

The fast developments in AI voice synthesis led to in a revolutionary era in technology: immediate voice cloning. Modern algorithms can now produce a nearly identical replica of an individual’s voice using just a few minutes of their voice recording. Most of us probably have heard a number of songs that include the voice of our Prime Minister; these recreated tracks are a clear example of AI voice cloning. Such technology has allowed creators and businesses to create things like songs, speeches, etc., in the unique yet identifiable voices. It could enhance creative and personalized media but, in doing so, also creates complex ethical and legal difficulties, particularly with respect to copyright, privacy, and personality rights. AI Voice Cloning: Understanding the Technology Voice cloning is dependent on the cutting-edge of deep learning and machine learning algorithms to analyze an individual’s voice frequencies, tone, and accents. Once those specific characteristics are recorded, they can be reproduced digitally in order to create audio that as closely as possible resembles the original speaker. This feature, when paired up with Speech Synthesis Markup Language (SSML), enables users to personalize aspects like pronunciation, pitch, and speed, making it as realistic and lively a voice as possible, closely identifying with a natural human voice. These are great possibilities, but there is a flip side where this technology can be abused if used without the knowledge of the person whose voice it matches. The Arijit Singh Case: A Significant Decision on Personality Rights The recent ruling by the Bombay High Court in favour of Bollywood singer Arijit Singh brought attention to the legal issues surrounding AI voice cloning. The court, in the present case, provided interim relief to Arijit Singh, recognising that his voice, name, and likeness are essential components of his identity, referred to as “personality rights.” Arijit Singh initiated legal action against Codible Ventures LLP, a firm that allowed users to generate content using his voice without obtaining consent. The court’s decision to define the unauthorised use of Singh’s voice as a violation of his rights sets an important precedent. It emphasises that an individual’s voice, much like their name or image, is an integral aspect of their identity and is protected under personality rights.  The court acknowledged Singh’s status as a well-known and influential artist, pointing out his reputation and goodwill in India. The court highlighted that previous cases concerning personality rights indicate that using a celebrity’s voice or personal traits for commercial gain without permission constitutes a clear violation of those rights. This ruling clearly suggests that tools that allow for the generation of content in a celebrity’s voice without their permission infringe upon their rights and pose risks to their economic and public standing. Legal Considerations: Copyright, Personal Rights, and More The decision involving Arijit Singh carries major consequences for several legal concepts, such as copyright, intellectual property, and personality rights. 1. Personality Rights: This case highlights that a celebrity’s name, voice, and likeness are integral parts of their personal brand and identity. Protecting these rights stops illicit third parties from profiting off someone else’s identity and plays a crucial role in protecting their career and livelihood. 2. Copyright and Ownership: The complexities of ownership arise when dealing with AI-generated content that utilises cloned voices. Is the voice model subject to copyright protection, and who holds the legal rights to the content generated with that voice? When a voice model originates from a public figure, the boundaries of copyright law can become vague. It raises questions about who actually holds the rights: the creator, the individual whose voice is replicated, or the developer of the AI. 3. Economic and Reputational Concerns: The unauthorised use of a prominent voice can have adverse impacts on the person’s professional life. In Singh’s situation, his reputation and popularity render his voice a crucial element of his personal brand. The court’s decision recognises the potential harm that unauthorised use of his voice may pose to his professional standing and revenue. 4. Right to Publicity: This case expands the idea of an individual’s control over the commercial use of their identity. With the growing ease of AI voice cloning, it is becoming more vital to safeguard individuals against the unauthorised use of their identity. This acknowledgement offers a foundation for protecting people’s identities and personal characteristics in the era of AI. Setting Standards for AI Voice Cloning The Arijit Singh case highlights the pressing need for well-defined and thorough regulations concerning the commercial application of AI voice cloning technology. Considering the possibility of misuse, here are some suggestions to tackle these challenges:  Explicit Consent Requirements: The use of an individual’s voice or likeness must obtain clear, documented consent, especially when it pertains to commercial purposes. Transparency: Informing consumers about the use of an AI-generated voice is crucial to prevent any potential misunderstanding, particularly when the cloned voice closely resembles a well-known individual. Defining Usage Boundaries: Setting clear boundaries between personal and commercial applications can help prevent misuse while allowing individuals to utilise the technology for their own non-commercial purposes. Conclusion This ruling by the Bombay High Court, giving practical effect to Arijit Singh’s right over his voice, is a positive balancing act between harnessing the modern technology of AI voice cloning and protecting individual rights. Considering the new technology of voice synthesis, society must develop legal protections against the appropriation of one’s voice, name, and likeness. This ruling is a landmark case in that it shows how the law can adapt to emerging technology and preserve innovation while ensuring the protection of individual rights against invasive practices. Such frameworks will be critical to ensure the responsible use of this powerful tool, prevent misuse, and safeguard individual identities as we explore its potential further.

Read More »