CAN ACRONYMS BE TRADEMARKED?

INTRODUCTION

Trademark is a kind of intellectual property which can be a brand name, sign, logo, slogan, etc. which can be represented graphically and represents a brand or its product. The trademarks are those signs by which a brand is recognized in public domain.

An acronym is a word made of first letter of successive combination of words. It is a word itself which is made from combination of letters. An acronym doesn`t have a meaning of its own. Examples of acronyms are: PIN (Personal Identification Number), NASA (National Aeronautics and Space Administration), NITI (National Institution for Transforming India)

Can acronym be trademarked? Acronym is a unique word on its own, trademark of an acronym is possible but there are some considerations which will be seen in this article. The process of trademarking an acronym is similar to that of a logo or design. But there are technicalities to deal with depending upon facts and circumstances of a case to claim rights for a trademark. Popular acronyms as trademark are: CNN: [Cable News Network], BMW: [Bayerische Motoren Werke], BCCI: [Board of Cricket Control India]

CAN ACRONYM BE REGISTERED AS TRADEMARK?

Definition of mark in section 2[m] of Trademark Act,1999 is given as “any device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colors or combination of any kind.” As per the definition, an acronym is eligible to be registered as trademark as long as distinct and can be represented graphically as it is a word. However it has to satisfy other conditions:

1. Eligible as per the Trademark Act: An acronym is not too different from other trademarks; therefore, it has to follow the same criteria in order to become a trademark

A] Non Descriptive- An acronym must not be solely descriptive of its kind, quality, quantity, etc.

B] Non-Generic- Not used commonly in trade.

C] Distinctness- Not similar or identical with an already existing trademark.

Acronym hence must not fall under grounds of refusal given in section 9 and 11 of the act.

2. Must be filed in a separate application- The registration of trademark of acronym is not assumed with registration of the whole word as trademark. Therefore different applications are to be filed for claiming right of acronym as trademark.

3. Must be in use- The acronym must be used continuously and extensively in advertising or selling of goods or services such that the general public start associating acronym with that brand.

4. Registration of Full form- It is a pre requisite for the full form to be registered, in some cases it is allowed if it’s not registered provided it is at least capable of being registered.

5. Acronym must be registered - To claim right for an acronym, its registration is must. Although in some cases depending on facts and circumstances, right may be claimed for an unregistered acronym. Unregistered acronyms can be protected if it can be proved that it has gained sufficient reputation and goodwill and people associate that brand with that acronym.

TRADEMARK LAW ON THE ACCEPTANCE OF ACRONYMS AS TRADEMARK IS EVOLVING AND HAS SOME TECHNICALITIES, SOME OF THE ASPECTS ARE

·         Well known acronyms- Well known marks are those who have gained popularity in the area in which business is operated. Well known acronyms likewise have been protected under Trademark Act,1999 provided they are being recognized widely among people of that area where such mark has been made use of.

VIT University V Bagaria Education Trust C.S.No.476 of 2012

 Madras High Court gave recognition and granted exclusive right for ‘VIT’ as it has been in use since 2001and become well known among public as confusion might be caused.

·         Registration of Generic or Descriptive Trademark

If the acronym is generic or descriptive, it must not be acceptable for registration as trademark, like a normal trademark. The meaning of whole word doesn`t matter generally as acronym is a separate unique word. But in some cases acronym was also found descriptive due to the whole word being descriptive. CV, for instance is acronym for ‘Continuous Vision’ was rejected due the whole word being descriptive of the functions of the good.

International Students Identity Card Association & Anr. V Abhishek Tiwari [CS (COMM) 113/2016]

Plaintiff had acronym ISIC registered as trademark for International Students Identity Card Association, defendant had ISID mark for ‘Indian Student Identity Card’. The court decided that plaintiff cannot claim monopoly for the initial letters as the words are descriptive of the business.

·         Two different words with same acronyms

Logically and by comparing acronyms to trademarks, one acronym will have right over the other. But there have been cases where 2 identical acronyms have been given allowance to co-exist as separate trademarks

The Institute of Chartered Accountants of India v. The Institute of Cost Accountants of India CS(COMM) 271/2021

The Delhi High court decided in favor of Indian Charted Accountants of India against the other ICAI as the former had registered its acronym and restrained the later to use the same mark as it is deceptively similar and both are engaged in similar sevices therefore would lead to cause confusion among public.

Prior use as ultimate factor to decide claims:

Science Olympiad Foundation Vs Shivalik Olympic Foundation CS(OS) No. 2590/2015

Where both had same acronym as trademark, [SOF] the case was decided in favor of Science Olympiad because of its prior use of the mark.

Kerala State Road Transport Corporation (KSRTC) v Karnataka State Road Transport Corporation (KSRTC) (T)O P(TM)/176, 177 & 178/2023

This case was decided after 7 years of legal dispute between Kerala State Road Transport Corporation (KSRTC) and Karnataka State Road Transport Corporation where the former operates in Kerala and later in Karnataka. The former claimed exclusive right over the latter for the reason of prior use and the later filed for exclusive right of the same, it was denied in 2021 judgement. But court did not bar any party to use the acronym, provided they use them honestly and amicably, thus allowing co-existence of identical marks.

CONCLUSION

Thus acronyms are allowed to be registered as trademark provided they fulfil the criteria necessary for registration of trademark. This article provides details on different situations when acronym can be accepted as trademark and when they can`t be. The registration of acronym and full name must be done separately.

Acronym is itself a separate unique word, whose eligibility must be tested separately. Generally, descriptiveness of the full form doesn`t prevent acronym to be trademark, however contrary view have been seen in some judgements. There are no specific rules in one direction for trademark registration applicability for acronyms as law in this regard is still evolving.