This article is written by Krati Agarwal, pursuing a Diploma in Intellectual Property, Media and Entertainment Laws, from LawSikho.

Introduction to trademark

Trademark is the symbol, image, font, color, slogan etc we identify with when we are using a product or service. It can be in the form of a word like ZARA or a symbol like 4 rings of Audi or even the whole packaging of the product like the shape of a coca-cola bottle. Statutorily it is defined under Trademarks Act, 1999 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 the shape of goods, their packaging and combination of colors. 

Historically speaking, craftspeople in Rome, Egypt and China left a unique, distinguishable mark on anything they made from roof tiles to tableware. The marks were not used for any legal right but for the sole purpose of claiming creativity over a product. Soon they became a symbol of quality and people started preferring the products with marks on them as they were able to identify the maker and hence link a good experience with those products. This saved them from choosing products from unknown sources and going through the process of trial and error again. It was better to repurchase identifiable products than going for unmarked products. 

Functions of trademark

1. Protect the rights of the proprietor: A trademark protection accords exclusive right of usage to the proprietor and hence prevents others to copy or create a similar mark and free ride on his/her popularity.
2. Reduces economic cost of consumers: Trademarks help in identifying the products of one seller from another and hence reduces the cost of searching, trial & error etc.
3. Guarantees Quality: Trademarks help in distinguishing products or services because of which it is easy to trace back who the maker is. This acts as an impediment for the maker to make & sell defective products or services as it can harm his reputation.

Bird as a trademark for United Breweries

United Breweries is an Indian company and famous for its beverage brand ‘Kingfisher’. The same mark is also used for its airline services. The trademark of the brand consists of the word ‘Kingfisher’ and the device of the kingfisher bird. Can the beverage brand and Airline Service use kingfisher bird as a trademark?

The answer to the question is simple. If the mark kingfisher (both word and device) is distinctive, it can be used as a trademark. What constitutes distinctiveness is not defined under the Trademarks Act, 1999. But what does not constitute distinctiveness has been defined under Section 9(1)(b) &(c). It says that trademarks which are indicative of the kind, quality, quantity, intended purpose, values, geographical origin or the time of production or other characteristics of the goods or services or those which have become customary in language used and in the established practice of trade shall not be registered. Example can be “Good Hair” cannot be used as a trademark for any hair product because it is describing the “intended purpose” of the product.

Distinctiveness is of 2 types:

Under inherent distinctiveness, three kinds of marks fall:

1. Fanciful
2. Arbitrary
3. Suggestive

Under Acquired distinctiveness, two kinds of marks fall:

1. Descriptive
2. Generic

These are explained below with the increasing order of their strength in law.

1. Generic marks: They refer to general words which can never be accorded trademark protection. Example- the mark ‘Water Bottle’ for Water Bottles, ‘Pen’ for pens etc.
2. Descriptive Marks: As the name suggests, they are those marks which describe the products or services or their quality for which they are used. They are generally not protected under law but can only be accorded protection when they have acquired a secondary meaning to themselves. This means that the public has started linking that descriptive mark with a particular seller only. Examples can be HOLIDAY INN for Hotel Services and AMERICAN AIRLINES for airline services. 
3. Suggestive Mark: They are the marks that suggest the quality or characteristics of the goods or services they are used for. They do not describe the goods or services directly but consumers can identify them by using their imagination and creativeness. They are accorded protection under Trademark law as they are considered as distinct marks. Examples can be NETFLIX which is indicative of a service online, MED-AID for first-aid services.
4. Arbitrary Marks: They are those marks which have a common meaning but do not have any relation with the product or service they are representing. Example: APPLE for laptops, LOTUS for cosmetic products etc.
5. Fanciful Marks: These are the marks which are made up words or devices and do not bear any meaning. For example: Xerox, Kodak etc. 

Use of kingfisher in beverage products

For the use of the device of kingfisher bird in beverage products, it clearly falls under the category of arbitrary mark. Kingfisher is a particular type of bird which is blue in colour and is found across many continents. It has a well established meaning, but it bears no relation to the product it is representing. No reasonable person of average intelligence can recognize a beverage brand by looking at the name & device of the kingfisher bird. Hence, it is totally legal & valid for Kingfisher beverages to use the bird for its trademark. 

Use of Kingfisher in airline services

When it comes to use of Kingfisher (both word & device) for airline services, it may not fall under arbitrary mark. Since the bird is a symbol of flying, it bears a suggestion that it can be used for airline service. But this is a suggestion which a reasonable man of average intelligence will form using his creativity and imagination only. This mark does not describe the kind of service the brand offers. 

There is a very minute difference between suggestive & descriptive marks. A descriptive mark is one where the customer gets an immediate idea about the product or service offered, while in suggestive mark, a leap has to be made by him based on existing knowledge. 

Supreme Court in the case of T.N. Venugopal v Ushodaya Enterprises [(2014) 4 SCC 85] stated that the line between suggestive mark and descriptive mark is very thin. Various commentaries have laid down the imagination test to determine whether the mark is descriptive or suggestive. When it is applied to the mark in question, “Eenadu” for a newspaper, it is clear that the same is descriptive in nature inasmuch as it means “today”, i.e. news for today. It does not require any imagination at all.

Similarly, Bombay High Court observed in the case of Indchemie health Specialities Pvt. Ltd v Intas Pharmaceuticals Ltd. [ (2015) 63 PTC 391] that a descriptive term specifically describes one or other characteristics or ingredient of goods. Such a term is ordinarily not registrable as a trademark, unless it has, by acquiring a secondary meaning, i.e. becoming distinct from the goods of the applicant for registration, become a valid trademark. A suggestive term, unlike a descriptive term, suggests rather than describes an ingredient or characteristic of the goods. It still requires the observer or listener to use his own imagination and perception to determine the nature of goods.

Relying upon the precedents cited above, it is evident that to deduce airline service from the mark kingfisher, an imagination is required on the part of the consumer. It is not a descriptive mark. Kingfisher bird merely suggests flying, just as much it suggests something tiny (it is a small bird) or uniqueness (as its blue color is very different). It would be descriptive if it was used for bird food. Hence, Kingfisher Airlines can use Kingfisher bird as a trademark as it is merely a suggestive mark which is protected under trademark laws. 

Conclusion

Trademarks have existed from time immemorial for the assistance of consumers. The more a trademark is unrelated to the product or service, the better protection it is granted in law. The Kingfisher mark is completely arbitrary for a beverage brand and hence it is protected completely under law. There might be some confusion regarding its usage in Airline Service at the first instance, as it is suggestive of flying. But as stated above, suggestive marks are granted protection under law because they require efforts from the part of the consumer to identify the nature of product or service. It doesn’t lay out the characteristics of the product/service out in the open like descriptive marks and only point towards a possibility which may or may not be true. For example twitter uses a Robin Blue bird as its mark which is suggestive of tweet, chirp, or a short message. But it is not descriptive of a social media platform where short messages are the norm. Similarly, the Kingfisher bird can be used by Kingfisher Airlines as its trademark.

References

• https://www.bitlaw.com/trademark/degrees.html
• https://theipcenter.com/2018/07/fanciful-trademark/#:~:text=An%20 example%20of%20an%20 arbitrary,peanut%20butter%2C%20it%20is%20distinctive.
• https://www.mondaq.com/trademark/873224/the-evolution-of-trademarks–from-ancient-egypt-to-modern-times#:~:text=The%20world’s%20first%20 comprehensive%2C%20 modern,Act%2C%20which%20 passed%20in%201857.&text=In%201905%20the%20law%20was,trademark%20protection%20and%20registration%20rules.
• https://www.financialpoise.com/ma-deal-structures/

Students of Lawsikho courses regularly produce writing assignments and work on practical exercises as a part of their coursework and develop themselves in real-life practical skills.

LawSikho has created a telegram group for exchanging legal knowledge, referrals, and various opportunities. You can click on this link and join: