What's in a Name?

Brand names matter a lot. A consumer’s confusion can only be put to rest after you feed him/her with a distinctive mark to distinguish between different goods and services. An intelligible Trade Mark Attorney/Lawyer can explain to you how it is better to coin a fanciful word like “Kodak” for Cameras; and an arbitrary word like “Apple” for computers; instead of thinking of a generic name like “Aqua” for bottled water.

A trade mark or service mark determines your claim to the characteristics that identify the goods or services that your business involves with, allowing the consumers to cite the differences between what is yours’ and what is that of the competitors’.

Some names have had what is known as “inherent distinctiveness” and so have got protection without much ado, like, Kodak, Exxon, etc. And, there of course is the concept of marketing, advertising and positioning of products and services in a manner, that the brand name is etched in the minds of the eager consumers. Trade marks (inclusive of service marks) which are names or geographical terms, have to prove that they have become distinct in the market, through substantial sale figures, and advertisements; and, have said to have acquired “secondary meaning” as a consequence.

What a business house does not want is for the brand name to become a generic name. Xerox has been vocal with their slogans and advertisements, with declarations like “you cannot ‘xerox’ a document, but you can copy it on a Xerox Brand copying machine”. Despite so many efforts from their end, dictionaries have oft quoted “Xerox” in their prints.

Whenever, you decide to venture into any business with a new trade mark, consult a Trade Mark Attorney or Trade Mark Lawyer in respect of selecting an appropriate trade mark which is free from any legal encumbrances. 

- Bagmisikha Puhan

Distinctiveness in Trade Marks

It is a wide known fact and generally accepted concept of law, that for a mark/label/logo to be worthy of Trade Mark Protection, there should be a level of distinctiveness that the proposed mark/logo/label projects or promotes in the first place.

Distinctiveness has always been classified under the broader spectra of Inherent Distinctiveness, and Acquired Distinctiveness. It is a futile exercise to explain what can be categorized as Inherently Distinctive, like what Wrangler is to Jeans! The concept refers to a scenario where any name is arbitrary, fanciful and sets apart itself from the rest in the relevant product or service market.

On the contrary, suggestive or descriptive marks are not inherently distinctive; only when they achieve a degree of secondary meaning, when they acquire distinctiveness, can Trade Mark Protection be extended to such marks. India, like most other nations, allows for certain marks to be registered when satisfying the grounds for acquired distinctiveness; overlooking certain grounds for refusal of registration.

The significance of Acquired Distinctiveness has always been the subject of debate. When a mark gains popularity so much so as to help and let the consumers associate its products and services with the industrial house itself, such use of the mark is said to have acquired distinctiveness, a secondary meaning is attributed to such use, and product recognition by the consumers. The extent of this secondary meaning and acquired distinctiveness is what makes it possible for a mark to enjoy the desired Trade Mark Protection, when under the general circumstances it would have failed to do so.


- By Bagmisikha Puhan