This article is written by Mayank Labh, a student of NALSAR Hyderabad.
Trademark is defined under section 2(zb) of Trademark Act which is “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 colours”. A mark is defined under section 2(m) which defines it as something which includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.
It is a “legally binding dibs” that means that you are not going to use such name, device etc. if it has been registered as a trademark unless you are fine with paying huge amount of damages to the owner of the trademark.
It is a matter of great legal interest whether slogans can be registered as Trademark. By the way, Slogans are the expressions used as marketing and communicating tool to boost the sale of products. One of the examples of slogan is “Once you Pop, You cannot stop”.(No, it’s not of a condom as you might be guessing but it’s a registered trademark of Pringles, a snack,)
When can a slogan be registered as Trademark
As it is clear what is a trademark and slogan it becomes important to see whether slogans can be within the meaning of Section 2(m) and 2 (zb) of Trademark Act which defines Trademark.
The answer is definitely yes but with some qualifications. Yes, because it is capable of representing graphically and distinguishing the goods of one from another and it creates a connection with the person who is selling such goods with the slogan. So, for example, “I am loving it” (Again this is not a slogan of condom company) make you think about McDonalds company and it makes McDonalds product distinguished from another.
However, there are certain qualifications. Under Section 9(1) of Trademarks Act which lays down ground for refusal of registration which is, in nutshell, is that it should be distinctive in nature and not distinctive.
In a landmark case Anchor Health and Beauty Care Pvt Ltd. v. P&G Manufacturing Co Ltd the distinction between distinctive words and descriptive marks was elaborated. It said that descriptive words/marks are which communicate only about the products feature, intended purposes, kind, quality but distinctive words are such that which communicate the particular/peculiar quality/qualities or features of product of one and which may not exist or do not exist in the same product being provided by others. So, if anything is unique to the goods of one and which may not be present in the same goods and services provided by another can be registered under the Trademark Act.
The reason being that such words/mark highlight and communicate to the consumer the difference from the similar goods or services of another available in the market.
In a foreign case, Paris Hilton won a huge lawsuit over Hallmark for infringing on her trademarked catchphrase: “That’s Hot!” she sued Hallmark for using the expression and she won for it was considered as unique and distinctive to her reality show. That’s incredibly hot win by a hot actress. Who says blondes are dumb?
How to register a trademark?
- a) A soft copy of the logo in JPEG format
- b) TM 48 (form of authorization).
- c) Date of first use of the mark.
- d) Name and address of the proprietor of the mark
- e) Required fee
What is the process
You have to make an application to the Trade-mark Registry with a prescribed fee of Rs. 2500.(Not a big amount for you can gain a lot by filing even frivolous lawsuits claiming your trademark rights!)
You need to see if there is already a trademark of such words/marks.
After you are done with the registration, you will be issued an official receipt with a TM number.
After this an examination report has to be filed within three months after the application. The purpose of it is to see whether it is conflicting with any of the registered trademarks or not.
As you clear off the objections, your application is then published in Indian Trade Marks Journal with an endorsement that it has been accepted.
Once it is published and if no objection comes within 3 months of publishing then your application is completed and you will enjoy your trademark rights for 10 long years.