Given the widespread awareness of benefits of trademark registration at a global level, most business owners contemplate securing a trademark registration for their brand name prior or after launch. Statistically speaking, one a miniscule percentage of business entities are able to exercise exclusive monopoly rights over their trademark even after registration and such advantage is only available to registrants of highly distinctive, arbitrary and fanciful marks.
A good trademark is a mark that is arbitrary, invented, and fanciful marks that are highly distinctive, e.g., Pepsi, Canon, Kodak.
Common rejections by trademark office
It is appalling that less than 20% of trademark applications proceed straight to registration without receiving a preliminary objection or refusal by the trademark examiner. Two most common types of objection are
- Substantive refusal
- Relative refusal
Substantive objection is raised when the trademark fails to function as a trademark, either by being:
- directly descriptive of the goods or services;
- consisting of a generic word or a pseudo-mark of such word;
- consists of prohibited names reserved for governmental use;
- Obscene, offensive or scandalous;
- Lacks distinctiveness to function as a trademark or incapable of distinguishing goods or services;
Relative refusal is raised when the applied mark is similar or identical to the pending or registered marks on the register of trademark, either by being
- Phonetically, visually or conceptually similar or identical to part or whole of a pending or registered trademark;
- Similar or confusingly similar to a well-known mark.
Common myths and ill-advices
Trademark applicants are routinely misguided on the concept of distinctiveness of a trademark. Most instances applicants are advised to file for a logo when a trademark is descriptive or identical to a similar mark. It is pity that applicants are misguided and does not get what they are looking for and such registrations do not serve the purposes of a trademark registration which is supposed to grant an exclusive right over the mark to the owner to prevent others from misusing it. Some commonest myths are
- It is okay to apply for a similar mark by adding or changing the spelling;
- It is okay to apply for a similar mark by adding some design elements.
- A logo or label gets registered easily than a word mark, so it is always good to register a logo or label
Reality: The reality is when an applicant chooses to register a logo or label, his rights are limited or restricted to the overall graphical representation, and not extended over individual elements such as a words used in it.
What needs to be done?
Trademark conceptualization must be done in a staged manner and involvement of a trademark counsel is imperative in the earlier stages to ascertain whether a mark is distinctive and has any potential risks of being similar to existing registered or unlimited marks. This can be achieved by way of a trademark clearance search, which will determine the risks, distinctiveness and success rate. Businesses who intend to expand their business outside India must extend this due diligence exercise to cover other jurisdictions where they intend to register their mark.
A trademark clearance search prior to application will not only save your legal costs, but also curtail any unwanted litigation or opposition proceedings from third parties, which would cost you dearly, let alone the costs and efforts in re-branding.