How to Choose a Good Trade Mark

Brands should be considered as very important aspect of the business growth. The brands also help to develop the business identity for any company or the products or the services. The brand names are legally known as trade mark or trade name. The value of the trade mark moves upward when the goodwill of the business is predominant in the market. In 2019, the well-known trade mark Coca-Cola has been valued 80.83 billion U.S. dollars. The trade mark Coca-Cola was introduced in 1886 by John S. Pemberton, whenthe unique soft drink was first served at a soda fountain located at Atlanta in USA. At present, more than the hundred years later, the Coca-Cola has become the one of the most thriving brand in the world, holding the rank among the top tenbrands in the world.

A trade mark plays a key rolefor a company and the product identity. Therefore, the sentiments of the customers are also depending on the product identity.A trade mark is typically a graphically represented word or logo adoptedby a company as a part of its origin or identity,which should be capable of obtaining the legal protection against duplication by any third. It is utmost important to know how to choose a good trade mark or distinctive trade mark to start any new business.

A new identity

A wise step to move ahead with a new business, is surely to choose a distinctive trade mark. The lack of proper attention or for the casual approachin selecting a trade mark,can cause legal hurdles resulting to withdrawal of trade mark from the market place due to the presence similar kind of trade mark which is in prior use. Thereby, the new business may encounter a huge loss in wasting money in designing and printing the pamphlets or packaging materials.

Generally, a trade mark is created to develop the business for prospering future, butsometimes it is halfway. For example, the business house often considersthat that they have a great brandname but eventually when it moves forward to secure the trade mark registration, the various legal hurdles create the stumble block for the trade mark registration. The other shortfall is more damaging as it fails to protect the subject trade mark againstinfringement. A legally-weak trade mark may not succeed to prevent the duplication. For any new business, it is utmost important to secure the registration of trade

markregistration at the very beginning rather than undergoing the modifications in order to comply with the legal parameters later. For example, the Amazon, now a giant online retailer, had decided to select a trade mark like ‘morebooks.com’ when they started their business in 1995. Probably, it would have been a herculean task to come out of such narrow trade mark unless they have decided only to confine with selling the various printedarticles.

It is obvious that the difference of opinion always exists between the marketing professionals and the legal professionals those who are specialized in the field of Intellectual Property Rights in respect of selecting a ‘good’ trade mark. The Marketing people always prefer to select the trade mark or service mark which easily relates the product or service. But according to the laws related to the trade mark registration, such generic trade mark is not eligible for trade mark registration. Therefore, such generic trade marks  havea weaker protection against the duplication of product or service.

There are number of reasons why the chosen trade mark turns ‘bad’. Firstly, it miserably fails to establish any exclusive right for the product or service in the business.More upsetting when it also fails to prevent any kind of infringement of the subject trade mark.

For example, if a trade mark is not distinctive enough in the midst of other competing trademarksand not capable of connecting theproduct with the consumers exclusively, then it turns to be ‘bad’ trade mark. A trade mark which is based upon common surnamelike bajajAuto,or a basic slogan (WE SERVE INTIME) or the trade mark that simply says something about the product (SALTY MUNCH)are not considered as good trade mark for the lack of distinctiveness . Such kind trade marksare always selected by the new business houses. But unfortunately, such trade marks are noteligible for trade mark registration under the Trade Marks Act, 1999 in India,due to its generic nature.

The Laws which govern the Trade Mark Registration in India alsodefines that when a trade mark referring the nature, kind or quality of goods or services, is considered as non-distinctive trade mark. The non-distinctive trade marks are not eligible for Trade Mark Registration in India,   e.g. GOLD CARD for a scratch card or PREMIUM SIP for beer. The public in general will not be able to distinguish the respective products as exclusive for any particularcompany and thereby no exclusive right can be granted in favour of any particular company by The Trade Marks Registry in India for such kind of laudatory expressions.

Now the question arises what is a ‘good’ trade mark?  The answer is simple. The more distinctive is the trademark,the stronger chance of securing the registration of trade mark in India ,which can protect the product from duplication.

The newly created words such as REEBOK, DULUX or KODAK are the distinctive trade marks . Moreover, the unrelated dictionary words – e.g. APPLE or ORANGE – can be considered as distinctive trade mark when it representssomegoods or services without any direct reference. These trade marksare neither exist in neither the dictionary nor referring any goods or service directly. These are the ‘good’trade marksand therefore, these trade marks are also legally protected by the Trade Marks Act, 1999 in India.

For example, thetrade markSTRIKE THE DAY for a scratch card is more attractive and considered as a good trade mark rather than the expression GAIN MORE CASH.

Standing out

Another aspect of selecting a ‘good’ trade mark is to stand out of others by choosing a word or expression which is not common or not used by others. For example, a new company A adopts a trade mark which is already in use by another Company Band thenB can raise legal objectionagainst A for using the same trade mark and thus,  the trade mark owned byA will be not considered for  trade mark registration due to the pre-existence of  similar trade mark.

This situation happens very often when a new company does not consider receiving anyprofessional help from a trade mark attorney who may analyze legality and can suggest a good trade mark. Particularly, the new company may face the unpleasant situation to modify therespective trade mark for any kind of legal issue,after investing huge time and moneyto build the popularity,printing huge

number of brochures or creating websites. This unpleasant situation was encountered by the big giant like Apple who discovered in Brazil, another unknown company had the registration of trade mark IPADand the same was filed a few years before the first Apple IPAD came into existence.Thus, the trade mark registration in different countries is also equally importantto venture the global business.

To avoid such a scenario, it is always safe to follow a trade mark search procedure conducted by a trade mark attorney or trade mark law firm to understand the various legality. It is suggested that the trade mark search should be as exhaustive as possible. Therefore, the professional support from a trade mark attorney firm is very important.Company in-house research through internet is not good enough to understand all the risk factors. Before the trade mark search, a trade mark attorney can suggest whether the chosen trade mark is ‘good’ or ‘bad’. If the chosen trade mark is generic in nature orbeing similar to the trade mark registered by a number of other business houses, then the subject trade mark is evidently ‘bad.’

If any trade mark has been found clear through the trade mark search procedure, then an application for the registration of the trade mark can be filed without any delay.The subject trade mark will be registered in favour of the particular company andthereby it will be easier to take action against the trade mark infringement or passing off.

Conclusion

• Always select a ‘good’ trade mark in business.
• The trade mark should be always distinctive in nature.
• A creative word or logo is always favorable for registration.
• The trade mark should not have any relation to the goods or services concerned.
• The trade mark should be not narrow to the present field of business.
• The trade mark should have broad coverage.
• Avoid the common word either in general language or in the trade.
• Conduct trade mark search tolocate the similar trade mark.
• The trade mark should not be subject to any legal procedure.
• The registration of trade mark is essential in the business.