Types of Trade Marks

A General Overview

In general terms, a trade mark is a word or a symbol that establishes a connection between an enterprise and the goods or services of the enterprise. In Indian law, Section (1)(i)(V)(m) of the Trade Marks Act, 1999 defines a mark, while Section 2(1)(i)(viii) (zb) defines trademarks. Based on the specific functions that trade marks perform, they may be classified into the following types:

1. Word marks

A word mark may comprise words, letters, or numbers. No other representation of such a mark falls under this category. Examples include the plain word representation of “Facebook” and “Tupperware”.

2. Device marks

A device mark comprises a logo or combines both words and a logo. Examples include the McDonald’s’ ‘M’, the Puma logo and Nike’s “Swoosh”.

3. Composite marks

A composite mark involves a combination of words, logos, shapes, designs, and scents, and may include elements of color. Examples include this older logo of Levi Strauss & Co. [1]

4. Collective marks

A collective mark recognizes membership with any collective group or association that provides goods or services of a similar quality. Section 2(1)(g) of the Trade Marks Act, 1999 defines a collective mark in the Indian context as “a trade mark distinguishing the goods or services of members of an association of persons [not being a partnership within the meaning of the Indian Partnership Act, 1932 (9 of 1932)] which is the proprietor of the mark from those of others.” Two sub-types of collective marks include:

a. Collective trade mark or service marks

This sub-type includes collective organisations that may not necessarily provide goods or services, but may advertise or endorse them, the evidence of which is the mark such good or service carries. The purpose of such a mark is to differentiate the collective organisation’s members from non-members. An example may be “CA” used by members of the Institute of Chartered Accountants (ICA).

b. Collective membership marks

This sub-type intends to signify membership in a collective organisation and not to perform the source-identifying function explicitly. It does not solely intend to inform the perceiving public of a certain shared quality of goods or services. An example may be the Rotaract Club's mark.

5. Certification marks

Certification marks define standards. They focus on communicating to the customer that a certain good or product adheres to a certain prescribed standard of quality. It is different from collective marks because certification marks can be used by any individual who meets the prescribed standards, not merely members of a collective. Examples include standards for gold jewelry, TMT rods, and electrical appliances.

6. Series marks

Series marks are when a certain predominant element of a mark may be used in differing formats by a proprietor. Instead of filing separate applications for each use, the predominant element, when used in conjunction with other words obtains protection. An example of the same is McDonald’s’ “Mc”, used as “McVeggie, “McPuff”, “McMuffin”, etc.

7. Unconventional marks

The unconventional or non-conventional trademarks are usually based on appearance, shape, sound, smell, taste, textures, etc. Read more about it here.

a. Colour mark

A colour that is distinct to a certain good or service can be the subject matter of trademark protection. An example is Cadbury’s Purple.

b. Shape mark

The distinctive shape of a product is registrable as shape marks. An example is the shape of the Coca-Cola bottle.

c. Sound mark

Sounds attributable to a certain good or service may be protected under trade mark law. An example is the “Roaring Lion” sound of MGM Pictures.

d. Motion mark

A motion mark is a unique animation made either using graphics, a computer sequence, or a video. This animation is reminiscent of the brand to its viewers. An example is Nokia’s handshake animation.

e. Smell mark

When a smell is characteristic of a brand’s products, it may be registered as a smell mark. An example is the smell of Play-Doh clay.

f. Position marks, texture marks, and taste marks are other types of unconventional trade marks whose registrability and legitimacy as marks have been subjects of controversy. Position marks exemplify absolute grounds for refusal under the European Union Trademark Regulation. An example of the same is the positioning of Adidas’ stripes on the side of their shoes, whose validity as a trade mark was questioned in https://www.theipmatters.com/post/shoe-branding-europe-bvba-v-adidas-ag.

Following the EUIPO’s history of trade mark registrations, Texture marks, being the least common type, require proof of acquired distinctiveness to be proven. However, as per the functionality doctrine, they must not have a utilitarian purpose, but rather serve the purpose of source identification. However, as more attempts to register such marks continue, one will be able to see how tests for registrability are applied, and whether registries’ stances will shift.

Sources:

1. https://logos-world.net/levis-logo/

2. Trade Marks Act, 1999