Name: Arpit Sanjay Shukla

Roll No: 09

PRN: 2017033800065874

4th Year B.A.LL.B (Hons.)

Subject: Intellectual property Rights

Topic: Definition, Functions and Essentials of Trade Mark.

 INTRODUCTION

Trademarks not only help distinguish products within the legal and business systems—but just as
significantly with consumers. They are used to identify and protect words and design elements
that identify the source, owner, or developer of a product or service. They can be
corporate logos, slogans, bands, or the brand name of a product.

A commercially successful trade mark should be attractive and relevant to the market in which it
is to be used. It should also be distinctive, and not descriptive of the goods or services, so that it
may readily be distinguished from competing trademarks.

This latter requirement is very important and easily overlooked in the selection process for a new
trade mark. The more descriptive a trade mark is of the goods or services, the more effort will be
required to educate the buying public that the trade mark is yours and not someone else’s. If a
trade mark is too descriptive, or consists entirely of non-distinctive elements such as a common
surname, place name, laudatory terms, or terms that competitors would legitimately be expected
to use, then the trade mark may not be able to be registered, even after many years of use.

Using a trademark prevents others from using a company or individual's products or services
without their permission. They also prohibit any marks that have a likelihood of confusion with
an existing one. This means that a business cannot use a symbol or brand name if it looks or
sounds similar, or has a similar meaning to one that’s already on the books especially if the
products or services are related.
 Definition

A trademark is a distinct symbol, logo, word, or multiple words that are legally registered or
established through their use as representing a company or product brand. A trademark protects
brand names and logos used on goods and services. Trademarks are intellectual property rights
that are protected by law. Trademarks are different from patents, which protect inventions,
and copyrights, which protect an original work of authorship.1

The primary purpose of a trademark is to provide brand recognition to consumers. Trademarks

assure the consumer that the company or products bearing the trademark are of a known and
reliable quality. Simply stated, trademarks protect consumers from being misled. Accordingly,
trademarks ensure free competition by protecting the goodwill of the entity that owns the mark.

Section 2(l)(m) of the Trade Marks Act, 1999 defines a mark as a device, brand, heading, label,
ticket, name, signature, word, letter, shape of goods, packaging or combination of colors ,
numeral shape of goods, packaging or combination of colors or any combination thereof.

According to Section 2(l)(zb)2 trademark is defined as, " a mark capable of being represented
graphically and which is capable of distinguishing the goods or services of one person from
those of others and may include shape of goods, their packaging and combination of colors; and
in relation to Chapter XII (other than section 107), a registered trade mark or a mark used in
relation to goods or services for the purpose of indicating or so as to indicate a connection in the
course of trade between the goods or services, as the case may be, and some person having the
right as proprietor to use the mark; and in relation to other provisions of this Act, a mark used or
proposed to be used in relation to goods or services for the purpose of indicating or so to indicate
a connection in the course of trade between the goods or services, as the case may be, and some
person having the right, either as proprietor or by way of permitted user, to use the mark whether
with or without any indication of the identity of that person, and includes a certification trade
mark or collective mark.

1
https://www.legalwiz.in/
2
Trade Act, 1999
  Yahoo! Inc. v. Akash Arora & Anr 3 Perhaps the first of the landmark judgment on cyber-
squatting in India. It was for the first time that the Delhi High Court held a registered domain
name equivalent to the trademark giving it the entitled, equal protection. The defendant, in
this case, was ‘Yahoo India!’ for protecting their domain name. Now, this was identical and
even phonetically similar to the plaintiff’s trademark ‘Yahoo!’ 

The court believed that people will be deceived into thinking that both the domain will carry the
same source. Here, the defendant was of an argument that it has put a notice, statin
g the same, on the website. Though, the court didn’t approve the disclaimer to be sufficient since the
nature of the internet is such that it is difficult to rectify the domain name simply by putting up a
disclaimer.
Also, Yahoo! was quite renowned even globally and the court observed that ‘Yahoo India’ of the
defendants is almost similar except that it uses the suffix ‘India’. The concern of deception was large
and since Yahoo! was the Plaintiff, the injunction was done in their favor.

FUNCTIONS

1. A trademark serves the purpose of identifying the source or the origin of goods. Trademark
performs the following four functions.4

2. It identifies the product and it’s origin.

3. It proposes to guarantee its quality.

4. It advertises the product. The trademark represents the product.

5. It creates an image of the product in the minds of the public particularly the consumers or the
prospective consumers of such goods.

3
Yahoo! Inc. v. Akash Arora & Anr

4
https://www.advocatekhoj.com
 Essentials of a good trademark

 An ideal trade mark should be attractive to sound and appearance and suggest the quality
of the product. Most importantly an ideal trademark should be made in such a manner
that it can be distinctive from other trademarks of the same class and should be able to be
registered and protected. The following are the few attributes of a good trademark that
should be considered before Trademark Registration.
 A trademark must be a mark which includes a device, heading, brand, label, ticket,
signature, word, letter, name, numeral, packaging or combination of colors or any
combination of the above attributes.
 It should be easy to speak and spell. A good trademark is such that the public can easily
spell and speak.
 It should be easy to remember. A good trademark that is easy to speak and spell can be
easily remembered as well. So that it becomes easy for public to
 It should not be too lengthy and complicated to be forgotten easily. If it is lengthy or
complicated, people will not bother to take the effort to memorize it and ultimately it will
be forgotten.
 It must be distinctive. It can be natural distinctiveness or acquired distinctiveness.
 The best trademarks are invented words or coined words or unique geometrical designs
 It can only be suggestive of the quality of the products, but not descriptive
 A good trademark should not be barred under the Trade Marks Act under the Prohibited
classes of trademarks.5

Marks Not Registerable

1. The use of which would be likely to deceive or cause confusion.

2. A mark the use of which would be contrary to any law for the time being in force
3. A mark comprising or containing scandalous or obscene matter
4. A mark comprising or containing any matter likely to hurt the religious susceptibilities of
any class or section
5. A mark which would be disentitled to protection in court of law
6. A mark which is identical with or deceptively similar to a trademark already registered in
respect of the same goods or goods of the same description
7. A word which is the accepted name of any single chemical name or chemical compound
in respect of chemical substances.
8. A geographical name or a surname or a personal name or any common abbreviation
thereof or the name of a sect, caste or tribe in India.
5
Hyundai Corporation vs Rajmal Ganna on 14 September, 2007
 Conclusion

Ultimately a trademark should be easy to remember whether it is a word, or any other feature
like color combination, labels, etc. It should not be too lengthy and complicated to be forgotten
easily. It can only be suggestive of the quality of the products, but not descriptive; as it is against
the law to include words like pure, excellent, best, perfect, etc. A good trademark should not be
barred under the Trade Marks Act under the Prohibited classes of trademarks.