What can be a trademark
Under Section 2(m) of the Trade Marks Act, 1999, a “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging, combination of colours, or any combination of these.
Section 2(zb) defines a trademark as a mark capable of being represented graphically and capable of distinguishing the goods or services of one person from those of others, including the shape of goods, their packaging and combinations of colours.
Put simply: almost anything can be a trademark, provided it distinguishes your goods or services from everyone else’s.
In practice that includes:
| Type | Examples |
|---|---|
| Word | PEPSI, PEPSODENT |
| Name | RAYMOND, CHRISTIAN LOUBOUTIN |
| Surname | TATA, BATA, BAJAJ |
| Signature | LOUIS PHILIPPE |
| Letters | BMW, IBM, HDFC |
| Numerals | 555, 501 |
| Symbol | The Mercedes-Benz three-pointed star |
| Device | The Amul girl |
| Colour scheme | Pizza Hut, Domino’s |
| Packaging | Cadbury’s |
| Shape of goods | The Coca-Cola bottle |
Where a mark is used for services rather than goods it is often called a service mark. DHL, Hilton and Infosys are service marks. Because the line between goods and services is not always clean, “trademark” is generally used to cover both.
The distinctiveness spectrum
This is the part that determines how easy your mark will be to register and how strongly you will be able to enforce it.
The five-category framework comes from Abercrombie & Fitch Co. v Hunting World, Inc., decided by the US Court of Appeals for the Second Circuit in 1976. Indian practice has adopted the same spectrum, and Section 9(1)(a) of the Trade Marks Act refuses registration to marks that lack distinctive character.
Marks run from strongest to weakest as follows.
| Category | What it is | Registrable? |
|---|---|---|
| Fanciful | Invented words with no prior meaning | Strongest. Easiest to register and enforce |
| Arbitrary | Real words with no connection to the goods | Strong |
| Suggestive | Hints at the goods, requires imagination | Generally registrable |
| Descriptive | Describes a characteristic of the goods | Difficult. Only with acquired distinctiveness |
| Generic | The common name for the product itself | Never |
Fanciful marks are coined for the purpose of serving as a trademark and have no relationship to the product. BATA, Kodak and Adidas are examples. Nobody else has a legitimate reason to use them, which is what makes them both easy to register and straightforward to enforce.
Arbitrary marks are ordinary words used in a context where they mean nothing. Apple for computers, Uber for transport. The word exists, but not in that field, so it still functions to identify a single source.
Suggestive marks hint at a quality or characteristic without describing it, requiring some imagination to make the connection. Microsoft is the standard example. These are generally registrable, but the line between suggestive and descriptive is fine, and some suggestive marks do not make it through.
Descriptive marks describe a characteristic of the goods, whether quality, quantity, kind, intended purpose or geographical origin. Section 9(1)(b) excludes marks consisting exclusively of such indications, because other traders have a legitimate need to use descriptive language.
A descriptive mark can be registered where it has acquired distinctiveness through use, meaning consumers have come to treat it as a brand rather than a description. That requires substantial evidence of extensive and continuous use, and it is an expensive route compared with choosing a distinctive name in the first place.
Generic terms are the common name for the product. They cannot function as trademarks at all and cannot be rescued by evidence of use.
Genericide is what happens when a strong mark becomes the everyday word for the product and loses its capacity to distinguish. Xerox and Escalator are the cautionary tales. Brand owners spend real money on trade usage guidelines specifically to prevent it.
The practical takeaway
The name that most obviously describes what you sell is usually the weakest one to protect.
This is the trade-off nobody tells founders about. A descriptive name markets itself, because customers immediately understand what you do. It is also the name that draws Section 9 objections, that competitors can legitimately use variants of, and that you will spend years and considerable money trying to establish acquired distinctiveness for.
A coined word means nothing to anyone on day one and needs marketing spend to build meaning. It is also the name you will actually own.
If you are choosing a brand name now, this is a legal decision as much as a marketing one, and it is far cheaper to get right at the outset than to fix later. See marks that cannot be registered for how Section 9 objections are raised and answered.
Special categories
Certification marks, defined in Section 2(e), certify characteristics of other people’s goods or services such as origin, material, mode of manufacture or performance. The ISI mark is the familiar Indian example. The proprietor certifies; it does not trade under the mark itself.
Collective marks belong to an association or group of persons and identify goods or services of its members. CII is an example.
Series marks allow a proprietor to file several variants of a mark in one application where the primary element is common. McDonald’s marks incorporating “Mc”, such as McChicken and McCafé, are the classic illustration.
Non-conventional marks including sounds, shapes and colour combinations are registrable in India, subject to the requirement of graphical representation.
Frequently asked questions
Which type of mark should I choose for a new brand? Fanciful or arbitrary, if you have the choice. Descriptive names are easier to market and much harder to own.
Can a descriptive mark ever be registered? Yes, where it has acquired distinctiveness through use, meaning consumers have come to treat it as a brand rather than a description. That requires evidence of extensive use, which is expensive to assemble.
Can I register a surname? Surnames are registrable but often face objections, particularly common ones, since other people with that surname have a legitimate interest in using it.
Are sound marks really registrable in India? Yes, subject to the graphical representation requirement. They are uncommon but not exotic.
What is the difference between a certification mark and a collective mark? A certification mark certifies that someone else’s goods meet a standard. A collective mark identifies goods or services of members of an association.
Useful official resources
- IP India public search
- Trade Marks Act, 1999 — Sections 2(e), 2(m), 2(zb)
- TMClass — for checking goods and services terminology accepted in India
Choosing a brand name and want to know how defensible it is before you commit? Talk to us.