Advocate & Intellectual Property Attorney
Trade Marks | Patents | Copyrights | Designs
Trade Marks | Patents | Copyrights | Designs
Manish M. BhagnariB.Com. & LL.B.
From the legal prespective, there are certain guide-lines, which must be adhered to by ideally everyone engaged in any trade, business, occupation, or service, when creating a legally strong brand, which is also intended to be registered as a trademark.
Good Branding Practices
Following list provides tips for legal sound branding practises:
1. An 'invented' word, having no meaning in any language, is considered stronger as compared to a word found in a dictionary, as per the Trade Mark Law & Practise. Examples include Kodak, Adidas, Reebok, Pentax, Nokia, etc.
2. A word that is descriptive in meaning in relation to the goods or services is generally as a rule refused registration. For example, the word 'sweet' describes a characteristic of chocolates, so it cannot be granted registration as a chocolate brand - individually or in combination with other words. But the word 'sweet' can be registered for goods or services that has no bearance with the meaning of 'sweet' - therefore, it can successfully be registered for clothing, electronics, stationary products, etc. for instance.
3. A word, that qualifies the goods or services - such as good, better, best, right, great, special, fantastic, or worthy - cannot be granted registration, either individually or in combination with other word or words.
4. The words that are generic in the trade to which the goods or service belong, are not granted registration. For example, 'denim' being a generic word in the clothing industry can never be registered as a trademark by anyone.
5. Before creating a new brand-name the trademark database at official governent website shall be thoroughly searched, to rule out any possibility of it being same or similar to an existing registered trademark or to the one already applied for registration. The principle behind this rule of law is that, the consumers shall not be confused between two brands that are same or bear deceptively similarity. If the word or words applied for registration have resemlbes to a registered trademark or those pending registration, the Trade Mark Examiners take objection, and later may even refuse to their registration.
6. The brand shall never look, sound or appear in any way similar to those which are termed under the Trade Mark Law as 'Famous Mark' and 'Well-Known Mark'. For instance, 'Amul' brand belonging to Gujarat Cooperative Milk Marketing Federation, Anand, Gujarat, is a Famous Mark, and Flying Machine, from Arvind Mills, is a Well-Known Mark. If the brand is same or similar to a famous mark or a well-known mark, the chances of opposition from them are very high. This means the application for registration may be refused at the 'opposition' stage, if it ever clears the 'objection' from the Trade Mark Examiner. Even an unregistered brand having similarity to a well-known or a famous mark, could be challenged in a lawsuit by the proprietors of such marks, which are mostly big corporates with huge financial resources as well as expertise to fight litigation.
7. Even though an invented word is ideal for getting registered fast, most people opt for English word, that carries a definition in dictionary. It's not that such a mark is difficult to be registered, but often it is found that most of the English words in common vocabulary/usage are either already register or already applied for. There are many world famous and popular brands such as Apple and Puma, that are English words with some meaning, but these marks carry no meaning for the goods they represent. Futher an unregistered word that has otherwise a very common usage among general public, can still be granted registration if it has been already in use for many years before it is applied for registration.
8. Words can also be joined together to create a whole new word,. Thus two English words each having some meaning can be combined to form a new word that has no dictionary meaning. For example, Ashworth, a golf apparel company, of TaylorMade-adidas, is a combination of two English words, viz Ash and worth; even though both the words have some meaning, the new word created by combining them has no meaning in English. Another example is 'Sunfeast', which is a new, but now a well-known brand of ITC Ltd. for its food produchs, Such combined words are next best to the invented words.