Trademark for Abbreviations – Is it Possible?
Under some conditions, acronyms, initials, or abbreviations can be protected as Trademarks. As per a general rule, an abbreviation cannot be considered descriptive unless the wording it signifies is merely illustrative of the products or services, and the abbreviation is instantly understood by respective customers to be substantially synonymous with the simply expressive wording it stands for. In this blog, we are going to discuss Trademark for abbreviations.
A Trademark is a name, logo, word, slogan, etc., which is used by a company to differentiate its products/goods and services from other companies in the same market. Pictures and words are the most common form of Trademark; however other distinctive signs can be registered so long as they are able of being represented graphically. For instance, designs that have successfully been safeguarded as Trademarks (for example, Coca-Cola bottles) are colours, family names, even smells & sound.
What is an Abbreviation?
It is a shortened form of a phrase or a word, and they are also known as acronyms; and acronyms are abbreviations of longer words with the starting letters or group of letters in a set phrase. For example, BMW which stands for Bayerische Motoren Werke.
Trademark for Abbreviations
Section 2 (m) of the Trade Mark Act, 1999 explains mark as any brand, device name, heading, signature, numeral, word, label, letter, packaging, the shape of products or combination of colours or combination of any kind. According to this definition, abbreviations or acronyms are a type of Trademark and hence must be safeguarded from Trademark Infringement, but there are some restrictions. Abbreviations cannot always be eligible for a Trademark. Trademark for abbreviations should fundamentally comply with some factors as mentioned below:
- It should not be expressive of the kind of packaging, product, etc.
- It should be filed in a separate application after the name registration.
- The customers shouldn’t be able to connect it with the products of others, and hence the abbreviations must also be highly different and not common.
Section 9 of the Trademark Act, 1999, defines some absolute grounds for the refusal of Trademark Registration, and they are:
- If the indications or marks have become usual in the present language or in the established trade routine;
- If the mark lacks unique character and cannot be differentiated from others’ products or services;
- If the Trademark includes marks or indications which explains the quality, values, intended purpose, kind, or geographical origin or production time or other characteristics of the products or services.
If the abbreviations or acronyms fall under any of the above grounds, then the Trademark for abbreviations or acronyms can be denied.
Trademark for Abbreviations or Acronyms – Can it be violated
According to Section 29 of the Trademark Act, 1999, a registered Trademark can be violated by anyone who is neither a person nor a registered owner who has been allowed to make use of the Trademark & to use it in due course of trade will be held as a Trademark Infringement. Moreover, it will also be called an infringement if a mark looks like the registered Trademark and resembles the products & services covered by such registered Trademark. Finally, it would also be held as a Trademark Infringement if an individual used a registered Trademark as their Tradename or part of their Trademark name or name of their business or part of the name of their business concern.
What are the Remedies available in the case of Infringement of Trademark for Abbreviations?
- Criminal Remedies
- According to Section 103 of the Act, penalties for applying for wrong Trademarks, Trademark descriptions, etc. Suppose there is an infringement of the Trademark of any company or any individual. In that case, the accountable person will be subjected to imprisonment for six months or is accountable to pay a fine that may extend up to Rs. 50,000.
- According to Section 105 of the Act, punishment for the second or subsequent offence under Section 103 & Section 104 of the Trademark Act. In this Section, the guilty person will be subjected to imprisonment for at least one year and which may be extended for three years along with a fine which will not be less than Rs. one lakh and which may be extended to Rs. 2 lakhs.
- Civil Remedies
- The aggrieved party can claim damages or harms because the Trademark Infringement led them to endure losses in their business/claim accounts of profit and the delivery of the violating goods for destruction.
- To safeguard the IPR owner’s interest, the court can issue direct customs authorities and an injunction to withhold the violating shipment or restrict its disposal in another way.
- Section 135 of the Act recognises the Anton Piller Order, which prevents the defendant from taking off assets from the jurisdiction of the court. In this Section, the court prevents the products or materials that are violating by ordering to seal the proposed products or materials.
- Administrative Remedies:
The different methods of executing administrative remedies are by correcting the Trademark, which look likes the Trademark that had been registered earlier. Another administrative remedy or cure that can be availed is to keep checking the trade activities of the goods that comprise the violated Trademark.
Case Law –Trademark for Abbreviations
Following is a case law of Trademark for abbreviations:
Facts: In the case of Modi Hitech India Ltd. vs. Superon Schweisstechnik India (2018), the Delhi High Court spoke on the issue related to the Trademark for abbreviations or abbreviations being used as Trademarks of the products being sold, techniques being adopted or the materials being used. The candidate was operating a business related to the repair and recovery of welding electrodes. The company’s Trademark was “SUPERON”, and they also used the word “VAC PAC”, which explained the electrodes that were vacuum packaged. The defendant also used the word “VAC PAC”, which meant vacuum packages also along with their Trademark “GMM/arc.”
Conflict of the Parties: The petitioner argued that “VAC PAC” was a term created by them & because of its maximum utilisation and over a long time, that term had gained a secondary meaning which caused the public to believe or trust that the products or goods having the term or word “VAC PAC” was a part of the petitioner’s company, The petitioner also argued that the Trademark has a unique and original set-up and lettering style.
Court’s Findings: The court ruled in the defendant’s favour, and it examined that the term was an expressive and a sign of the packaging style used by the company.
After discussing Trademark for abbreviations, it is concluded that the abbreviations must stand by the situations such as not being expressive of the services that the company or an individual gives and having a meaning that is different from the generic expressive terms that they show. The abbreviations should be such that the clients or public must not confuse them to be synonyms with a specific product. If such conditions are fulfilled, then only abbreviations or acronyms can be safeguarded under the Trademark Act, 1999 and by the administrative & civil remedies.
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