What is a trademark

A trademark is the characteristics or combinations of characteristics capable of distinguishing the

goods and/or services of one enterprise from those of other enterprises. Trademarks fall under the
ambit of intellectual property rights and are protected by national and international laws.

Examples of trademarks include the Nike “Swoosh” symbol, the arched M for McDonald’s or the
bitten apple symbol for Apple computers, etc.

Under The Trade Marks Act, 1999, the word “mark” is defined under Section 2(1)(i)(V)(m) as “a
device, brand, heading, label, ticket, name, signature, word, letter, numeral”. The term “Mark” under
the Act also includes the shape of goods, packaging, or combination of colours or any other type of
combination.

Section 2(1)(i)(viii)(zb) in the Trade Marks Act, 1999 defines trademark as a mark which is:

 capable of being represented graphically;

 capable of distinguishing the goods or services of one person from those of others;

 may include the shape of goods, their packaging and combinations of colours.

Section 2(1)(i)(viii)(zb)(i) in the Trademarks Act, 1999 mentions about registered trademarks for
goods and services and further states that the person has the right to use the mark as the proprietor.

Section 2(1)(i)(viii)(zb)(ii) in the Act states that a person has the right to use the mark either as a
proprietor or a permitted user whether with or without any indication of the identity of that person.
The proprietor or a permitted user can also use a certification trademark or a collective trademark in
this regard.

Essential Features Of A Trade Mark

A trade mark is visual symbol used in relation to any goods or services to indicate some kind
of trade connection between the goods or services and the person using the mark. In order
to bring it within the scope of the statutory definition, a trade mark should satisfy the
following essential requirements;
1. It must be a mark that is a device, brand, heading, label, ticket, name or an
abbreviation of a name, signature, word, letter or numeral shape of goods, packing
or combination of colors or any combination thereof.
2. It must be capable of being represented graphically.
3. It must be capable of distinguishing the goods or services of one person from those
of others.
4. It must be used or proposed to be used in relation to goods or services.
5. The use must be of a printed or other visual representation of the mark.
6. In relation to services, it must be the use of the mark or availability or performance
of services.
 7. The use must be for the purpose of indicating the connection in the course of trade
between the goods or services, and some person having the right to use the mark
either as proprietor or by way of permitted user as the case may be. It is not
necessary that the person using the mark should reveal his identity.
 Distinctive
A trademark needs to be distinctive. This means that the trademark needs to have an
uncommon and appealing quality that distinguishes it from other signs. Further,
distinctiveness can also be classified into inherent distinctiveness or acquired distinctiveness.
When a trademark is distinct in itself and no one can claim its use justifiably, it is referred to
as inherent distinctiveness. Acquired distinctiveness means that through its use the
trademark has acquired its distinctiveness. Being distinctive is one of the most
vital trademark features that businesses or entrepreneurs need to keep in mind.
 Non-descriptive
Another one of the essential trademark features is that it must be non-descriptive. This
means that if the trademark is a word, it can be other than an invented word whether it is
newly coined or already existing or can be a geometrical design. The trademark must be
short and can be suggestive of the quality of the products but it must not be descriptive,
elaborating on the characteristics of the goods or services.
 Easy To Remember
A trademark must be easy to spell as well as pronounce. This is one of the
obvious trademark features that must be considered while thinking of a trademark for the
business or product. The ease to spell and pronounce the trademark ensures that the
trademark is easy to remember and recollect. Additionally, the trademark should not be too
lengthy or complicated as that will make it difficult to remember.
In addition to these points, there are certain trademark features that need to be avoided for
the trademark to be legally usable and accepted by the authorities. These include-
 A trademark must not be offensive or violating the law.
 A trademark must not be deceiving or cause confusion in the minds of the public.
 A trademark must not contain scandalous matters.
 A trademark must not contain exclusively contain marks or indications which are
customary in the established practices of trade, such as the ISI mark.
 A trademark must not contain prohibited words whose usage is forbidden under the
Emblems Act.
Subject matter of Trade Marks
In India, trademarks are protected under the Trade Marks Act, 1999, and the subject matter
of trademarks includes various types of distinctive signs used to identify goods or services of
a particular business or individual. The law defines a trademark as any mark capable of being
represented graphically and distinguishing the goods or services of one person from those of
others. Here are some key aspects of trademark subject matter in India:
1. Word Marks: Trademarks can consist of words, names, slogans, or any combination
thereof. These marks are typically expressed in standard characters or script.
2. Device Marks: Trademarks can include devices, logos, symbols, or designs that are unique
and distinguishable. These marks can be in color or black and white.
3. Sound Marks: Trademarks can also include non-conventional marks such as sound marks.
These are audio representations that can be graphically represented and distinguish the
goods or services.
4. Combination Marks: These trademarks combine both word and device elements, creating
a unique representation that distinguishes the goods or services.
5. Shape Marks: Trademarks can include the shape of goods or their packaging, provided
that the shape is distinctive and not solely functional.
6. Three-Dimensional (3D) Marks: These trademarks consist of the shape or configuration of
goods, their packaging, or the combination of both. They relate to the overall appearance of
the product and must be distinctive to be registered.
7. Color Marks: Trademarks can include specific colors or combinations of colors, but they
must be capable of distinguishing the goods or services.
8. Smell Marks: In recent years, India has also recognized the registration of smell marks,
which are distinctive smells or odors that can be graphically represented.
9. Service Marks: In addition to trademarks for goods, India recognizes service marks for
services. Service marks serve the same purpose as trademarks but apply to services rather
than physical products.
10. Collective Marks: These are trademarks owned by an association or collective group to
distinguish the goods or services of members of that group from those of others.
11. Certification Marks: Certification marks are used to indicate that goods or services meet
certain standards or have been certified by a particular authority regarding their quality,
origin, or other relevant characteristics.
Different types of trademarks
The term trademark also describes any of the following types of marks. While trademarks
identify products including physical goods and commodities, there are also other types of
trademarks that protect different aspects of any product. However, the basic purpose of all
types of trademarks is to help consumers distinguish and differentiate between similar
products. Following are the main types of trademarks that can be registered:

Service mark
Service marks are exactly the same in principle as trademarks. However, the words, names,
symbols, or devices identify and distinguish the source of a service. Service mark serves as a
brand identifier. Service marks are used in services such as sponsorship, management and
investment, various services such as hotels, entertainment, real estate services, etc.
Examples of service marks include the golden arches of McDonald’s or the phrase “Just Do
It.” used by Nike.

Certification mark
A certification mark is any word, phrase, symbol or design or a combination of any of these,
owned by one party that certifies that the goods and services of another party meet certain
standards or requirements. A certification mark identifies either the nature of any product or
service. Examples of certification marks include star ratings in electrical appliances based on
the consumption of energy or the ‘India Organic’ certification mark for organically produced
farmed products in India.

Collective mark
A collective mark is used by members of any association collectively or any collective group
to identify the source of goods or services. It indicates a mark which is used for goods,
services and for a group of organisations with similar characteristics. The organisation or
group uses this mark for multiple people in a group organisation.
Collective marks are of two types: collective trade and service marks and collective
membership marks.
1. Collective trade and service mark
A collective trade or service mark is any word, phrase, symbol or design that is owned by any
co-operative, association, collective group or organisation and is used by the members to
indicate the source of goods or services. Examples of collective trademarks include the
marks used by various lobby groups. One of the commonly known collective trademarks is
CA used by the Institute of chartered accountant.
2. Collective membership mark
A collective membership mark is used to indicate that a person is a member of some
organisation, such as a trade union or an association like the Rotary Club. However, it is not
used to identify the source of goods and services.
Trade dress
Trade dress refers to features of the visual representation of any good or product or its
packaging that tell the source of the product to customers. It is implemented to protect
consumers from getting deceived or confused due to the packaging or appearance of goods
that are framed to replicate the original goods in question. Examples of trade dress include
the cherry red sole of a Christian Louboutin shoe or grills of the Rolls Royce car.

Non-conventional trademarks
Apart from the abovementioned, some other types of non-conventional trademarks that fall
under the category of trademark are as follows:
Wordmark
 Wordmark comprises any standalone word or words. They are used for business
purposes. Examples of wordmarks include words such as ‘FedEx’ or ‘Coca-Cola’ etc.
Lettermark
 Lettermark contains only one letter, initials or an abbreviation. Examples of
lettermarks are NASA, the abbreviated version of the National Aeronautics and Space
Administration, a space agency of the US Government or ISRO, the national space
agency of India also known as the Indian Space Research Organisation. The double C
mark of the French branch Chanel or the YSL mark of Yves Saint Laurent, a luxury
brand also falls under lettermarks.
Logomark
 Logomark only contains a symbol without any words but at the same time it encodes
a brand message. However, it requires advertisement reports to make this mark
recognisable. Examples of logomark include the famous bitten apple of the Apple
company.
Combination mark
 Combination mark is a combination of a lettermark and a wordmark or a
combination of a symbol and wordmark. Examples of combination marks include the
globe symbol with the word Wikipedia written in capital letters or the trademark of
Adidas. They are also known as device marks.
Colour mark
 Colour mark is the specific colour that serves as the trademark purpose of any
business. The colour should have definite and unique Pantone codes. One of the
most popular colour marks is the Tiffany blue colour, a specific shade of cyan used for
the jewellery boxes by the jewellery company Tiffany. Under the colour mark, brands
can also file their own colour combinations.
Shape mark
 Shape mark is a trademark that protects the specific shape of any product. Common
example of a shape mark is the unique shape of bottles or containers of the products
of specific companies which no other company can copy or replicate such as the
shape of Cadbury chocolate or the unique shape of the bottle of Coca-Cola.
Motion mark
 Motion mark is a unique graphics animation, animated computer sequence, or short
video used by the companies for the product. Popular motion marks include Nokia’s
open screen with a handshake, the car door motion of Lamborghini or the animated
graphics of picture companies, such as Paramount Pictures just before the beginning
of the movies.
Sound mark
 Sound mark is a trademark where sound is used to identify the source of the goods
and products. They include business jingles or specific sounds used by companies.
One of the examples of sound marks includes the default ringtones of smartphone
companies such as Apple or Samsung.

Functions of Trademarks in India

Primary Functions of Trademarks
A trademark primarily serves the purpose of identifying the origin or source of goods,
products or services. In India, a trademark performs the following functions:
 It identifies the product and its origin
 It proposes to guarantee the quality of the product
 It advertises the product as it represents the product
 It creates the image of a product in the minds of the public, especially the consumers
or the prospective consumers of the product
Product Differentiation Function
Trademarks serve as the basic means of achieving product or service differentiation. The
trademarks enable a customer to distinguish goods, products or services in the market
without confusion and make him/her arrive at a decision on what to purchase.
In perfect competition, trademarked services or products of various sellers are the perfect
substitutes for a buyer. But in product differentiation competition, such trademarked
services or products are just close substitutes. The competition takes place in building brand
loyalty and advertising effort based on the non-substitutability of the services or products.
For example: The advertisers of the brand ‘Surf’ seek to build an image that the ‘Surf’ brand
has qualities that cannot be replaced by any other detergent and all the other detergents like
‘Ariel’ or ‘RIN’ possess different quality or characteristics. A message is built up that the
customer is looking for the product ‘Surf’ and not just a detergent.
Identification of Source and Origin Function
One of the most important functions of a trademark is to serve as information to the
customers for identifying the origin or source of a product. The trademark guarantees the
identity of the origin of the trademarked services or goods to the consumer or end-user. It
enables the consumer to distinguish the trademarked goods or services from others that
have another origin without any confusion.
Under the Trademarks Act, 1999, a trademark must be distinctive to fulfil its identification of
origin function. When the trademark is distinctive, it is granted registration and protection
under the trademarks law in India. The Registrar of Trademarks can refuse the trademark
registration when the mark is not distinctive, and thus, the trademark will fail to perform its
function of identifying the source. Trademarks get legal protection under the Trademarks
Act, thus making it difficult for third parties to intimate or copy the product.
The Trademarks Act also safeguards the trademark since it prohibits any identical or similar
use of the trademark by its competitors in the market, who may take advantage of the
reputation and position of the trademark.
For example: The trademark ‘Brooke Bond’ identifies tea originating from a company
manufacturing tea and marketing it under that trademark.
Quality Function
A trademark ensures customers of the quality of the trademarked products or services.
Customers select goods or services known for their quality. Thus, trademarks help the
customers decide the products they need to purchase or the service they need to avail of.
Reputation and identification of quality are the key features of trademarks.
Customers often use trademarks to identify and choose products or services with quality.
When a customer has a good experience with a trademarked product, he/she will prefer to
use the same product having the same trademark. A customer will re-purchase a product
again as he/she will believe the trademarked product will have the same high quality that it
had when it was purchased previously.
For example: The quality of tea sold in the packs trademarked as ‘Brooke Bond’ would be
similar, but they would be different from tea labelled with the trademark ‘Taj Mahal’.
Advertising Function
The trademark represents a product or service. Another significant function of trademarks is
promoting products and services, thus providing an effective mode of advertising them. The
intention of the use of trademarks is to make consumers aware of the trademark and attract
their attention to the trademarked products or services. Customers can be attracted through
advertisements, which reinforce the image of a product or service.
Trademarks are used in marketing and advertising campaigns to establish positive
associations and brand recognition. The trademark or logos act as a visual cue for the
services and goods of a company and thus set it apart from its competitors. Companies can
achieve brand recognition successfully by using a logo or slogan.
For example: The trademark of ‘Sony’ is associated with electronic items. Thus, customers
associate the trademark ‘Sony’ with a particular quality of a particular class of goods. It
advertises the product while distinguishing them from the products of Sony’s competitors.
Creation of Image Function
Trademarks create an image of the product or service they are associated with. Trademarks
essentially function to create goodwill for the company. The goodwill embodied in a
trademark constitutes a company’s intellectual property or asset. The prolonged usage of a
trademark associated with a particular business helps the business gain reputation and
goodwill regarding its particular trademark.
In due course of time, the general public gains the knowledge and is aware of the trade
name or brand name and associates the particular trademark with the specific services or
goods. Thus, trademarks gain reputation and goodwill, which eventually expands to a larger
area making the trademarks known globally.
For example: The mark ‘M’ which represents the food items originating from the American
fast-food chain ‘McDonalds’, creates a reputation and image for food items offered by it for
sale in the market.