Trademark for acronyms or abbreviations – Is it possible to break it?
A registered trademark can be infringed by anybody who is not a person nor a registered owner who has been permitted to make use of the Trademark and to use it in the course of business, according to Section 29 of the Trademark Act, 1999. Furthermore, if a mark resembles the registered Trademark and the items and services covered by the registered Trademark, it will be considered an infringement. Finally, if an individual utilised a registered Trademark as their Tradename or part of their Trademark name, or the name of their business or part of the name of their business concern, it would be considered a Trademark Infringement.
Acronyms, initials, and abbreviations can be protected as trademarks under certain circumstances. As a general rule, an abbreviation cannot be deemed descriptive unless the phrase it represents is just illustrative of the items or services, and the abbreviation is quickly recognized by respective clients as basically synonymous with the simply expressive text it represents. We’ll talk about trademarks for abbreviations in this blog.
A trademark is a name, logo, phrase, slogan, or another symbol that a company uses to distinguish its goods and services from those of other firms in the same market.
The most popular type of trademark is a picture or a word; however, additional distinguishing marks can be registered as long as they can be represented visually. Colours, family names, and even scents and sounds are examples of designs that have been successfully protected as Trademarks (for example, Coca-Cola bottles).
Meaning of abbreviation
Acronyms are abbreviations of longer terms with the starting letters or group of letters in a set phrase, and acronyms are abbreviations of longer words with the starting letters or group of letters in a specified phrase. For instance, BMW (Bayerische Motoren Werke) stands for Bayerische Motoren Werke.
Trademark for abbreviations
Any brand, device name, heading, signature, numeral, word, label, letter, packaging, the form of items, or any combination of colours or combinations of any sort, according to Section 2 (m) of the Trade Mark Act of 1999. Abbreviations or acronyms, according to this definition, are a form of trademark that must be protected against trademark infringement, however, there are several limitations. Abbreviations aren’t usually eligible for trademark protection. Trademarks for abbreviations should essentially follow the guidelines outlined below:
- It should not be descriptive of the type of packaging, product, or anything else.
- After the name trademark registration, it should be filed as a separate application.
- Customers should not be able to associate it with other companies’ products, thus the abbreviations must be unique and uncommon.
Section 9 of the Trademark Act of 1999 identifies the following absolute reasons for trademark registration refusal:
- If the indicators or markings have become commonplace in the current language or in commercial practise;
- If the mark is generic and can’t be distinguished from other people’s products or services;
- If the Trademark contains markings or indicators that describe the product’s or service’s quality, values, intended purpose, kind, or geographical origin, manufacturing time, or other qualities.
The Trademark for abbreviations or acronyms can be refused if the abbreviations or acronyms fall under any of the aforementioned criteria.
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What remedies are available in the event of trademark infringement for abbreviations?
- Criminal Remedies
- Penalties for applying for incorrect trademarks, trademark descriptions, and so on are set forth in Section 103 of the Act. Assume that a company’s or an individual’s trademark has been violated. In that instance, the responsible individual would be sentenced to six months in jail or face a fine of up to Rs. 50,000.
- The punishment for the second or subsequent infraction under Sections 103 and 104 of the Trademark Act, according to Section 105 of the Act.
- Civil Remedies
- The offended party may seek damages or injuries as a result of the trademark infringement, which resulted in business losses/profit accounts, and the delivery of the infringing items for destruction.
- The court can grant direct customs authorities and an injunction to withhold the infringing shipment or restrict its disposal in some other way to protect the IPR owner’s interests.
- The Anton Piller Order, recognised under Section 135 of the Act, forbids the defendant from removing assets from the court’s jurisdiction. In this section, the court orders the proposed items or materials to be sealed in order to prevent them from breaking the law.
- Administrative Remedies
The many means of implementing administrative remedies include rectifying the Trademark that looks similar to the Trademark that was previously registered. Another administrative remedy or cure is to continue to monitor the trading activity of the items that make up the infringed Trademark.
Trademark for Abbreviations – Case Law
The following is a Trademark case law for abbreviations:
Facts: The Delhi High Court addressed the question of trademarks for abbreviations or abbreviations being used as Trademarks of items being sold, procedures being utilised, or materials being used in the case of Modi Hitech India Ltd. vs. Superon Schweisstechnik India (2018). The candidate ran a firm that specialised in welding electrode repair and recovery. The company’s trademark was “SUPERON,” and they also used the term “VAC PAC” to describe the vacuum-packed electrodes. Along with their Trademark “GMM/arc,” the defendant also utilised the term “VAC PAC,” which signified vacuum packaging.
Conflict of Interest: The petitioner argued that “VAC PAC” was a term they invented and that, as a result of its widespread use over time, the term had acquired a secondary meaning that led the public to believe or trust that products or goods bearing the term or word “VAC PAC” were associated with the petitioner’s business. The petitioner also claimed that the Trademark has a unique and original set-up and lettering style.
Findings of the Court: The court decided in favour of the defendant, finding that the word was both expressive and indicative of the company’s packaging aesthetic.
Following the discussion of trademarks for abbreviations, it was determined that abbreviations must stand by conditions such as not being expressive of the services provided by the firm or individual, and having a meaning distinct from the general expressive phrases shown. The abbreviations should not be confused with synonyms for a specific product by clients or the general public. Only abbreviations or acronyms can be protected under the Trademark Act of 1999 and administrative and civil remedies if certain requirements are met. Trademark registration can be done easily these days via the online portal at MUDS.