Of the very intimidating process of registering one’s trademark, the first step is to have done a thorough and complete trademark search before registering. Searches must be done to ensure that there are no similar marks in the same class as the proposed mark with similar goods description.
Trademarks can broadly be of two types – containing a word-mark (single or multiple words) and then – those containing a device such as a logo, label, figurative mark.
But the main problem arises when there is the question of a DEVICE which may be an image, graphic label, pictorial element, or combination of the above; its contents and elements used for illustrations may be of many types. A device may have only characters (can be seen in IBM or McDonalds), it may have a representation of simple shapes, colours, objects, animals, people, planets, or any other form of life, and may even extend to imaginary characters – or any such combinations.
When conducting for a trademark search for a logo or device mark, it will be highly impractical to look through every entry of the class of the proposed mark just to find a similar mark.
This is achieved through the Vienna Code, short for INTERNATIONAL CLASSIFICATION OF THE FIGURATIVE ELEMENTS OF MARKS – under the Vienna Agreement. The Vienna code classifies every element into a broad 29 categories. These categories have been meticulously classified, cataloged and categorized as tabulated below.
|Category 1||CELESTIAL BODIES, NATURAL PHENOMENA, GEOGRAPHICAL MAPS|
|Category 2||HUMAN BEINGS|
|Category 4||SUPERNATURAL, FABULOUS, FANTASTIC OR UNIDENTIFIABLE BEINGS|
|Category 7||CONSTRUCTIONS, STRUCTURES FOR ADVERTISEMENTS, GATES OR BARRIERS|
|Category 9||TEXTILES, CLOTHING, SEWING ACCESSORIES, HEADWEAR, FOOTWEAR|
|Category 10||TOBACCO, SMOKERS’ REQUISITES, MATCHES, TRAVEL GOODS, FANS, TOILET ARTICLES|
|Category 11||HOUSEHOLD UTENSILS|
|Category 12||FURNITURE, SANITARY INSTALLATIONS|
|Category 13||LIGHTING, WIRELESS VALVES, HEATING, COOKING OR REFRIGERATING EQUIPMENT, WASHING MACHINES, DRYING EQUIPMENT|
|Category 14||IRONMONGERY, TOOLS, LADDERS|
|Category 15||MACHINERY, MOTORS, ENGINES|
|Category 16||TELECOMMUNICATIONS, SOUND RECORDING OR REPRODUCTION, COMPUTERS, PHOTOGRAPHY, CINEMATOGRAPHY, OPTICS|
|Category 17||HOROLOGICAL INSTRUMENTS, JEWELRY, WEIGHTS AND MEASURES|
|Category 18||TRANSPORT, EQUIPMENT FOR ANIMALS|
|Category 19||CONTAINERS AND PACKING, REPRESENTATIONS OF MISCELLANEOUS PRODUCTS|
|Category 20||WRITING, DRAWING OR PAINTING MATERIALS, OFFICE REQUISITES, STATIONERY AND BOOKSELLERS’ GOODS|
|Category 21||GAMES, TOYS, SPORTING ARTICLES, ROUNDABOUTS|
|Category 22||MUSICAL INSTRUMENTS AND THEIR ACCESSORIES, MUSIC ACCESSORIES, BELLS, PICTURES, SCULPTURES|
|Category 23||ARMS, AMMUNITION, ARMOUR|
|Category 24||HERALDRY, COINS, EMBLEMS, SYMBOLS|
|Category 25||ORNAMENTAL MOTIFS, SURFACES OR BACKGROUNDS WITH ORNAMENTS|
|Category 26||GEOMETRICAL FIGURES AND SOLIDS|
|Category 27||FORMS OF WRITING, NUMERALS|
|Category 28||INSCRIPTIONS IN VARIOUS CHARACTERS|
Let us understand the importance of the Vienna code search using the below example:–
Mr.Suresh, a businessman who wants to sell sports shoes. Suresh wants his business to be successful and when it does, he wants to buy a Jaguar car. Keeping this dream in mind, he wants his shoes to be named Panther and carry the “leaping panther” emblem, which is exactly the emblem of his dream car. Little does he know, that PUMA the shoe company, also has a leaping wild feline animal, and in fact have been using this for as long as 60 years.
Now for a prospective new shoe buyer, this poses a problem. When researching for his/her next shoe purchase, the existence of Suresh’s panther brand shoe, alongside the well-established Puma, will obviously cause doubts – even in respect to both companies.
Even an honest mistake like this can be harmful to the long run of the brand. And that is why had Suresh searched for existing brand names of the Shoe category which have a device of a leaping animal, this could have been avoided.
But it is highly impractical to look through every single entry of the Shoe class of trademarks for a leaping animal, and that is why elements of every mark are supposed to be classified under what it figuratively represents.
Coming back to Suresh’s story, a simple search using the Vienna Code of the Tiger/Feline animal [Category 3] can yield results with such elements and appropriate choices can be made, without infringing or looking similar to other existing logos.
You may also continue to read the following important articles below:
How to Conduct Trademark Search in India?
Why Conduct Trademark Search?
The User Friendly Search Tool: Global Brand Database
Brand name registration: Selecting a good brand name
Trade name Vs Trademark
What Cannot be Registered As A Trademark?