It is the hallmark of a shrewd businessman to commence his business with a roadmap of his plans. In the course of his business, he applies a unique mark or symbol or word to his goods. When his customer base increases, his goods acquire reasonable reputation and his customers begin identifying his goods by the unique mark or symbol or word he had so adopted, his goods earn the reputation of being branded goods. What applies to goods applies to services also. When brands take charge of consumers' minds, the name of its proprietor takes the backseat. There lies the power of brands.

Functions of Brands


"Brand tells the person who is about to buy that what is presented to him is either what he has known before under the similar name as coming from a source with which he is acquainted, or that it is what he has heard of before as coming from that similar source". Sumat Prasad Vs. Sheojanan Prasasd AIR 1972 SC 2488 at 2490

Brands are Trademarks!
In common parlance, the word "brand" means, "Trademark" Hoechst V. Govt. of India 1983 PTC 265 . The precise significance of the word brand is not clear. Probably, it refers to those kinds of symbols, which are branded on the goods, in which case the symbols themselves would constitute the trademark. The branding is only a process of applying the mark upon the goods.

Wordmarks as Brands — Categories Caterpillar Inc v Mehtab Ahmed & Ors 2002 (25) PTC 438 (Delhi High Court) [Edited for the sake of brevity]
"The words or marks can broadly be divided into six categories. The first category of words is "generic". Such words are neither brand names; nor do they command any protection. The words, which are directly descriptive of quality of the goods, belong to the second category. Such words are adjective expressing quality or attribute of an article or goods. Third category is that of directly descriptive words. Fourth Category is of 'indirectly descriptive words'. Such words can be used as a mark or trademark irrespective of the fact whether they acquire secondary meaning or not. Words which are fanciful or arbitrarily applied to goods and do not have either direct or remote reference to the nature or quality of goods fall within fifth category. The last category is of "invented words". No meaning is attached to these words. These are composed by imagination and are designed for the first time. These words demonstrate or display effort or kill of imagination, faculty or power of inventing. They are inherently distinctive and therefore have to be protected in any case.

Trademarks falling within categories 2 to 5 have also to be protected as some of them over a period acquire secondary meaning while others due to prior and consistent use denote source and origin. If any attempt is made to either mutilate them or stimulate them such an attempt amounts to passing off as it demonstrates element of malafides for cashing upon the reputation and goodwill of such marks.

Brand Adoption — a cautious approach is needed!
It is necessary to combine common sense and caution while adopting a brand. It is better to design a comprehensive policy for brand adoption. A comprehensive search of the Register of Trademarks would help to find if the adopted brand resembles or is similar or identical to the brand of any other person. In this manner, chances of legal issues cropping up could be minimised if not altogether avoided. If search results are favourable, the proprietor could proceed towards securing a registration for the chosen brand. While adopting a brand, care must be taken, as far as possible, to ensure that the chosen brand falls in the sixth category aforesaid. One has to take a note of the relevant law also. The Trademarks Law itself does not allow registration of name of a place or person or a word that describes the attributes of the goods and services as trademarks. As a matter of abundant caution, the proprietor of a new brand may apply for registration of his brand in relation to all kinds of goods and services. He may also register a few possible variations of the chosen brand or logo.

Thus it is necessary to ensure that the mark chosen —

• is not the name of a person or place.
• does not connote the quality or characteristic attribute of the product on which the chosen mark or device will be applied.
• would not cause any injury to the sentiments of people or any religion.
• would not bring disrepute to the nation or her unity, integrity and sovereignty.
• is not a mark that lacks inherent distinctiveness and is capable of distinguishing the goods from similar goods of others.
• is not a mark that is similar or identical with any the marks of others.
• is not a mark that is famous in any other territory or country.

Registration is not mandatory
Brands are brands whether they are registered or not. Brands are known as brands on the basis of their function and it does not matter whether they are registered or not. In other words, registration of a brand does not make it what it is nor is registration a pre-requisite for using a brand upon goods.

As brands (are supposed to) distinguish goods and services of one person from those of another, they are registered by a public registry, which certifies and records the particulars of the proprietor, the goods and services and the length of its use by its proprietor. Brands are properties and the Trademarks Law protects proprietors of brands against misuse by others.

Owners beware
The owner of a brand cannot remain silent after registering his brand. He has to be wary of unscrupulous users who may mislead consumers by bringing into the market goods and services with similar or deceptively similar brands. If spurious goods and services enter the market carrying brands that are similar or identical to the brand of another, the function of a brand gets distorted and its value gets diluted. In such cases an infringement of legal and property rights, the original proprietor possesses over his brand.

As per the Trademarks Law in India The Trademarks Act, 1999 , registered marks have better rights than unregistered marks. When there is an unauthorized use or adoption of a similar or deceptively similar mark, the proprietor of a registered mark could commence a legal action against any infringement of his mark. In the case of the proprietor of an unregistered mark, a common law remedy, known as "Passing off action" is possible. The Trademarks Law in India recognises the concept of well-known marks. If the unregistered mark is a well-known mark, the proprietor may seek injunction against use of a similar or deceptively similar mark in relation to goods or services not connected with the goods and services of the proprietor of the well-known mark. The proprietor of an unregistered mark having a record of actual use of the mark would have better protection in a class of goods than the proprietor of a registered but unused mark in the same class of goods or services. In addition to legal action against the proprietor of the unused registered mark for passing off, the proprietor of the unregistered mark in use may even apply for removing the registration in favour of the other proprietor.