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What is a Trademark, Its Need and Kinds of Trademark

Table of Contents

Introduction

Trade mark is a kind of intellectual property that has its application in the field of trade and protects the interests of traders and consumers. Trade mark law ensures that a business not entitled to use a trade mark doesn’t use it to deceive the consumers as to the origin of any goods or services. A Trade Mark mainly functions as an identifier of origin of goods or services and distinguishing goods or services of one trader from another. It ensures that any person must not be able to take unfair advantage of others reputation or brand value in the market and the trademark laws govern different aspects related to a trade mark such as criteria, registration, assignment, permitted use, infringement etc. This article will give you an overview about what is a trademark, need of trade mark, historical development in India, International Conventions and Kinds of Trade Mark.

What is a Trademark? / Meaning of Trademark

A consumer often relies on certain inputs like packaging, brand name, marking on the goods while purchasing to get an assurance about origin and quality of the goods even before using them. In simple terms, Trademark is such a graphic symbol/mark which distinguishes goods of a trader from the goods of another trader. With globalization and industrial revolution, trade expanded beyond local limits and multiple players in the different industries entered the market which exponentially increased the value of trademarks because of their inherent quality of distinguishing goods from different traders.

The World Intellectual Property Organization (WIPO)1 provides the definition of trademark as a “sign capable of distinguishing the goods or services of one enterprise from those of other enterprises”. This definition, while concise, contains the essential elements that animate trademark law globally.

In India, Section 2(zb) of the Trademark Act, 1999 says “Trademark means a 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”.

In essence, a trademark have two basic elements:

  1. Capable of being graphically represented.
  2. Able to distinguish goods/services of a trader from others.

Need of Trademark

The main function of a trademark is to give an indication to the consumer/purchaser as to the manufacturer (origin) and quality of goods. A trademark also ensures fair trade practices by protecting the interests of consumers by helping them in identifying the origin of goods and of traders by restricting other traders from creating confusion in the market by using the same or similar mark. The development of trademark laws gave exclusive rights to use the trademark to the registered person or the owner. The enactment of laws to protect trademarks promoted business and trade initiative globally by benefitting owners of trademarks in terms of recognition and financial gains. The enactment of trademark laws also established procedures to enforce the rights of trademark owners (i.e. right to exclusive use) and get relief for infringements by the courts, which gave more meaning to the concept of trademark.

The Supreme Court explained the object of trade mark law in the case of Dau Dayal V. State of Uttar Pradesh2, in the following words:

“The object of trade mark law is to protect the rights of the persons who manufacture and sell goods with distinct trade marks against invasion by other persons passing off their goods fraudulently and with counterfeit trade marks as those of the manufacturers.”

History of Trademark Law in India

The concept of marking goods or articles to know its origin is not new, rather quite old. The creators of artistic articles practiced marking their creation to distinguish it from others and identify the origin of the art, and this practice is still present. This practice of marking articles/goods to know its origin, is even more significant in the field of trade. Such trademarks are found even in Harappan Civilization from trade with Mesopotamian and Babylonian civilizations. The laws of trademark formalised the procedures for registration and enforcing rights of the traders to deal in goods using a symbol or mark of some sort to distinguish his goods.

In India, the development of trademark law can be understood as follows:

  1. 1940 : The Indian Trade Marks Act, 1940 came into force. (The first statute exclusively governing trademarks). Prior to this Act the protection of trademark was ensured by the provisions of the Specific Relief Act, 1877 (For injunctions), the Indian Registration Act, 1908 for declaration of ownership. This Act was amended in 1941.
  2. 1943 : Trademark Registry was separated from Patent Office by enactment of The Trade Mark (Amendment) Act, 1943.
  3. 1955 : Govt. of India appointed the Ayyangar Committee, chaired by Justice N. Rajagopala Ayyangar, to review the provision of the 1940 Act.
  4. 1958 : On the basis of the report of Ayyangar Committee the Trade Mark Act, 1940 was replaced by the Trade Mark & Merchandise Marks Act.
  5. 1999 : With WTO coming into existence, a need for more harmonization of trademark law with international obligations resulted in the enactment of the Trade Marks Act, 1999. This act is in harmony with two major international documents: the Paris Convention and the TRIPS agreement.

Currently, the act of 1999 is the governing law for trademarks in India.

International Conventions on Trademark

Paris Convention, 1967

The Paris Convention3 applies to industrial property in the widest sense which includes patents, trademarks, industrial designs, geographical indications. The Paris Convention gave to significant principles: the National Treatment principle and the Right of priority. The convention gave provisions related to registration, well-known trademark, cancellation in case of non-use, assignment and service marks etc.

TRIPS Agreement, 1994

The TRIPS Agreement4 gave provisions for registration of trademarks as well as for protection of service marks which can distinguish goods of a trader. (Article 15, 16 and 62). It recognised the right to exclusive use and the right to prevent others from using similar marks that may cause confusion in the market. The TRIPS agreement also recognized well-known marks incorporating the Paris Convention by reference. – 

Madrid Agreement, 1891 (and Madrid Protocol, 1989)

The Madrid Agreement5 and the Madrid Protocol6 are governed by the WIPO. The aim of the Madrid system is to streamline the process of obtaining global trademark protection. The Madrid agreement and the Madrid protocol are independent yet parallel treaties with separate but overlapping memberships. India became a member of Madrid Agreement in 2013.

Vienna Agreement, 1973

The Vienna Agreement7 establishes a classification for marks which consist of, or contain, figurative elements (the Vienna Classification). The Classification consists of 29 categories, 144 divisions and some 1,667 sections in which the figurative elements of marks are classified.

The Trademark Law Treaty, 1994

This Trademark Law Treaty8 was adopted on 27th October 1994 in order to streamline the regitration procedures of trademarks. This treaty made the registration procedure of trademarks in multiple nations less complex.

Kinds of Trademark

On the basis of Distinctiveness

Fanciful Marks

These are the strongest and most easily protected types of trademarks. They consist of invented words that have no meaning other than their function as a brand identifier. Because they are inherently distinctive and have no prior meaning, they are afforded the broadest scope of legal protection. Examples include EXXON for petroleum products and PEPSI for soft drinks.

Arbitrary Marks

These marks are also considered very strong and inherently distinctive. They are composed of real words that have a dictionary meaning, but that meaning is entirely unrelated to the goods or services they are applied to. The lack of a logical connection to the product ensures they function solely as a source identifier. The classic example is APPLE® for computers and electronics.

Suggestive Marks

These marks are also inherently distinctive but are considered less strong than fanciful or arbitrary marks. They suggest or hint at a quality, ingredient, or characteristic of the goods or services without directly describing it. They require some imagination or thought on the part of the consumer to make the connection. Well-known examples include COPPERTONE® for sun-tanning products and NETFLIX for a service providing films (flicks) over the internet.

Descriptive Marks

These marks are not inherently distinctive and represent a significant step down in legal strength. They directly describe a feature, quality, characteristic, ingredient, or geographic origin of the goods or services. Examples include terms like ‘Super’ for quality, ‘One Dozen’ for quantity, or ‘Cleaner’ for a cleaning product’s intended purpose. Such marks cannot be registered on the principal register unless the applicant can prove they have acquired distinctiveness or secondary meaning over time.

Generic Marks

These are the weakest category and are legally unprotectable as trademarks. A generic term is the common, everyday name for the goods or services themselves, such as “shoes” for footwear or “restaurant” for a food service establishment. Granting a single company exclusive rights to a generic term would create an unfair monopoly and prevent competitors from being able to describe their own products.

Conventional Marks

Certification Trademark

As per , a certification trademark9 means a mark capable of distinguishing the goods or services in connection with which it is used in the course of trade which are certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics from goods or services not so certified and registrable as such under Chapter IX in respect of those goods or services in the name, as proprietor of the certification trade mark, of that person.

Collective Mark

A Collective Mark10 means 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) which is the proprietor of the mark from those of others.

Service Mark

A Service Mark11 is the same as a trade mark. The only difference is that instead of identifying the origin of goods, it identifies the origin of service. The mark of goods appears on the goods itself or their packaging and service mark appears in the advertisements of the services.

Non Conventional Marks

Shape Mark

The shape of goods are also recognized as trademarks under the section 2(1)(m) of the Trade Marks Act, 1999 if it is capable of distinguishing goods. However there are certain restrictions on registration of the shape of goods as trademarks which are given under section 9(3) of the Trade Marks Act, 1999 of the Act which are as follows:

  1. The shape which results from the nature of goods themselves;
  2. The shape of goods which is necessary to obtain a technical result;
  3. The Shape of goods which gives substantial value to the goods.

Sound Mark

The Trade Marks Act, 1999 has no mention about sound mark but the Trade Mark Rules, 201712 explicitly mentions rules for registration of sound mark. So, if a sound is capable of graphical representation (e.g. by musical notes) and is capable of distinguishing goods or services then it can be registered as a trade mark.

Colour Mark

The definition of trade marks (Section 2(1)(zb)) includes the color as trade mark.
In Libertel Groep BV v. Benelux-Merkenbureau13, it was held that a could not spatially defined is capable of being registered as a trade mark, provided it satisfies the three conditions:

  1. Being a sign
  2. Being capable of graphical representation; and
  3. Being capable of distinguishing the goods or services of one undertaking from another.

Domain Name

The purpose of domain name is to locate a website on the internet. Today, internet is highly engaged in the business transactions, often named as e-commerce. Domain names are being used for emails and identifying traders in digital space. So, domain name is serving the same purpose as a trade mark but in digital space.
In the case of Satyam Infoway Ltd. V. Siffynet Solutions (P) Ltd.14, the Supreme Court said:

“Ordinary consumers seeking to locate the functions available under one domain name may be confused if they accidentally arrive at a different but similar website which offers no such services. Such users could well conclude that the first domain name owner has misrepresented its goods or services through its promotional activities and the first domain owner would thereby lose their custom. It is apparent therefore that a domain name may have all the characteristics of a trademark and could find an action for passing off.”

Well-Known Mark

Being a signatory of the Paris Convention and TRIPS, India recognizes the concept of Well Known Mark15. A well known trade mark in relation to goods or services means a mark which has become so to the substantial section of public which uses such goods or services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services. [The Trade Marks Act, 1999, section 2(1)(zg)]

Conclusion

Trademarks are vital for businesses, acting as unique identifiers for products and services. They prevent consumer confusion and ensure fair competition. Understanding the different kinds of trademarks—like words, shapes, or even sounds—is essential to understand the concept of trade mark. This knowledge helps protect brands and navigate the complex world of intellectual property, making it a cornerstone of commercial law.

  1. https://www.wipo.int/en/web/trademarks#:~:text=A-,trademark,-is%20a%20sign, as accessed on 22/06/2025 ↩︎
  2. AIR 1959 SC 433 ↩︎
  3. https://www.wipo.int/treaties/en/ip/paris/, as accessed on 22/06/2025 ↩︎
  4. https://www.wto.org/english/docs_e/legal_e/27-trips.pdf, as accessed on 22/06/2025 ↩︎
  5. https://www.wipo.int/treaties/en/registration/madrid/, as accessed on 22/06/2025 ↩︎
  6. https://www.wipo.int/en/web/madrid-system, as accessed on 22/06/2025 ↩︎
  7. https://www.wipo.int/treaties/en/classification/vienna/index.html, as accessed on 22/06/2025 ↩︎
  8. https://www.wipo.int/treaties/en/ip/tlt/, as accessed on 22/06/2025 ↩︎
  9. The Trade Marks Act, 1999, Sec. 2(1)(e) ↩︎
  10. Ibid, Sec. 2(1)(g) ↩︎
  11. Ibid, Sec. 2(1)(zb) ↩︎
  12. Rule 26 and Form TM-A, the Trade Mark Rules, 2017 ↩︎
  13. 2004 FSR 465 (ECJ) ↩︎
  14. 2004 6 SCC 145 ↩︎
  15. The Trade Marks Act, 1999, section 2(1)(zg) ↩︎
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Himanshu Yadav

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