WORD MARK VIS-À-VIS LABEL MARK

The whole of science is nothing more than a refinement of everyday thinking.

-Albert Einstein

The human mind imagines things beyond its own comprehension. When the creator of any idea expresses this idea in a tangible form, it becomes a work of art, literature, invention, so on and so forth. There is the need to recognize the right of creators to their work, the right to express themselves and the right to be economically and emotionally profited by such work.

Intellectual property rights are the recognition of rights in an individual’s creation which is inadvertently deemed to be his property. It is the most innovative or revolutionary law, which focuses on human intellect or ideas. Copyright, patents, designs, trademarks and protection against unfair competition form the traditional core of intellectual property.

For the purposes of this write-up, it would be important to explain about trademarks. Trademark law governs the use of a device including a word, phrase, symbol, product shape, or logo by a manufacturer or merchant to identify its goods and to distinguish those goods from those made or sold by another.  The concept of mark is not a new one. For centuries, merchants and manufacturers across the world have labeled their products with signs of one kind or the other to distinguish them from those of their competitors. The modern concept of the marks came into light in the 18^th century as a result of the increased possibility of commerce and communication. In the year 1876, the Bass Red Triangle was registered under the Trade Mark Registration Act 1875, which happens to be the first ever trade mark. A mark is infringed when another person uses a mark so as to cause confusion as to the source or sponsorship of the goods or services involved. As explained above a trademark may be of many kinds. Herein word marks and label marks are discussed in detail, also bringing out the basic difference between the two kinds.

Word Mark

A word mark is a type of trade mark where the owner of the trademark is only claiming rights in the words, letters, numbers or slogan. In other words; in a word mark, all appearances and use of the words are protected. If a word shows sufficient distinctive character or is not affected by other grounds for refusal, it qualifies for a valid word mark. In the Trade Marks Act, 1999, word mark would have to show distinctive character, to qualify as trade mark. In Vishnu Cement (P) Ltd. 1998 PTC(18) 130, the Chennai High Court refused to register the word VISHNU being a very common personal name which had not become distinctive.

 Invented words or fanciful words are preferred for registration as word marks as they are considered distinctive ab initio and do not have to prove their distinctiveness. In Eastman Photographic Materials v. The Comptroller General (1898) 15 RPC 476 (HL), it was held that if a word was invented, it could be registered as word mark per se. some examples of word mark are COCA- COLA, FEDEX, GOOGLE etc. In another pending decision of Hilton v. Hilltone, the plaintiff hotel Hilltone feared that if the defendants are allowed to commence business in India and start hotels under the name Hilton, it will lead to taking of an undue advantage of the plaintiff’s reputation which will result into irreparable financial loss and mental agony to the plaintiff. Herein, the word Hilton is in controversy since it’s a very famous word mark.    

Label Mark

Label mark in India is more commonly known as the device mark. It means to use a devise along with a word in such a manner that the word and the devise used would create a trademark which is distinctive in nature. The point to be noted is that the word used alone would not make it a distinctive label mark. There is the mandatory requirement of the word to be in a particular style. Any other mode of writing it would not qualify it to be a label mark. For eg: the word Airtel if written in normal font without its characteristic background and font colour or size would not qualify it to be a label mark. However the manner in which Airtel advertises itself with its red background and font type makes it a label which is unique. Another example for label mark is the sticker of Smirnoff Vodka. It receives protection under the trademarks act. The common examples for such marks are Java which comes with the device of a stylized “S” above it.

In the case of British India Corpn. Ltd v. Khariti Ram, [1] the plaintiff is the registered proprietor of the mark KASHGIRI with the device of a lamb. This is one example of a label mark. Another could be illustrated in the case of Chorion Rights Ltd. v. Ishan Apparel,[2] where the use of the mark NODDY with a boy's head on the Y for children's apparel by the defendant was held to be a case of infringement, since the word NODDY already has a global trademark on it, just for the use of the word. The device of the boy with the word NODDY is an example of label mark and the word NODDY alone is a word mark.

The basic difference between word mark and label mark is that word mark is the graphical representation of a word in a particular style. Thus if the word Google is written in any other form it will not get word mark. In label mark there is the requirement of an added device which will make the word distinct in its usage. Even the absence of a word would not prevent it from getting a label mark if such device can add distinctiveness. These devices could include colour combinations, pictures, logos, particular font style, font size etc.

Other distinctions drawn between word marks and label marks are that no figures are required for pure word marks. If colours are claimed, protection is, in principle, restricted to the filed colour combination. A word mark application is made in capital letters. Another kind of trademark that is similar to these two is the combined mark, which is a combination of both device and word. Technically speaking, a corporate logo is a combined mark as the wording is combined with a pictorial element in that a specific typeface is selected or a device is added. In the case of a device mark, the symbol is sufficient in itself as the device is represented without any textual content.

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[1] 2003 PTR 25.

[2] IA 8042/2009 in CS (OS) 1154/2009.