Topics on Trademark that can help for an Informed Decision.
TRADEMARK: Have a brand name? Protect it!
As per the legal definition of trademark, it is a name, word, phrase, logo, symbol, design, image or a combination of all of these characters which gives an identity to the goods or services of one person and distinguishes them from those of others. It may include shape of goods, their packaging and combination of colours etc.
Indian trademark law also recognizes unconventional trademarks such as three-dimensional marks, shape marks, colour marks, sound marks and holograms.
Do you have a company? Does your company own a brand name? Do you want to protect your brand name? If the answer to any of these questions is a “Yes”, then you definitely need a trademark! A trademark will create a unique identity for your business, protect it and stop a third party from using it. A registered trademark also creates a widespread goodwill for your company.
Word mark: A word mark is a simple representation of a mark in words, letters, and numbers.
Logo mark: A logo mark is a mark where the representation includes stylization, design, shapes, logo, etc.
The term for which a trademark is registered in India is 10 years from the date of application of the mark. The mark can be renewed after the 10 years for the further period of 10 years by filing the application for renewal.
Please note that before registration of a trademark the insignia ™ can be used along with the mark to be registered and pursuant to registration, the insignia ® can be used along with the registered trade mark.
The Registrar of Trademarks classifies categories of goods and services under which the trademark is to be filed. This “Class” is essentially to define the purpose for which the trademark is being used, or is proposed to be used. India follows the Nice Classification which has 34 classes of goods and 11 classes of services.
There are a total of five intellectual property offices in India present in all major locations, namely- New Delhi, Mumbai, Kolkata, Chennai and Ahmedabad. You can file a trademark application only with the office which governs your area/ locality. The Application can be filed either online or offline in a prescribed format and manner alongwith the prescribed government fees as per the Trademark rules.
A Trademark is an identity of a company which helps in distinguishing the source of their goods/services. Trademark essentially comprises of words and phrases, thereby helping in identifying the origin, kind and quality of the goods/ services they belong to.
In today’s world, where online markets and TV commercials play a huge role in customer awareness, it is important that you build a brand name you are identified by! As easy to remember, distinctive and creative trademark ensures that the customer remembers the company when done watching the commercial!
Protection of your intellectual property by registering a trademark is absolutely essential. Illustratively, big tech companies like Apple and Samsung initiate swift and efficacious remedies against similar looking/ sounding brands because they do not want to find jerry-built goods being sold in the market under marks similar to theirs, confusing their users and ruining their goodwill for the poor quality goods/services.
Protecting a mark in India is a simple exercise. However, before filing an application for registration, you have to hire a lawyer to conduct a trademark search within the database of the trademark registry. This will apprise you of the trademarks already filed which look/ sound similar to your mark that you intend to register.
Thereafter, an application, along with the requisite fees, stating the class or classes (NICE Classification) you want your mark to be registered under considering your goods/services, has to be made to the Trademarks Registrar. The Registrar then conducts a check and prepares an examination report in consonance with the Trademarks Act of 1999.
Details of Trademark!
You intend to start a business, protect it and see it grow and nurture. You want to create a brand name in the market through a name or a logo by which you are recognised and remembered. A trademark, is essentially that. It helps you be recognised in the market, gives a source of origin to your products/services and ensures that you are recognised through it. A Pepsi logo is so significant to the brand that, just the colours blue, white and red on any beverage, relates its source to Pepsi and assures the user that the Company Name “Pepsi” is involved.
Considering the fact that trust is the biggest factor as far as product manufacturing and services are concerned, establishing a brand name and ensuring that you are recognised through it is essential. The emergence of a company with similar brand name in the similar class of goods/services might lead to confusion for the same customers and confuse them as to the origin of such products.
It is important to have a good trademark for your brand, for which it is important to understand what a “good” trademark is! There are many things which make a good trademark. Semblance of many, or all of these can and will make your mark stand out from that of your competitors. In order to have a good Trademark, it must fulfil the following requisites-
- Your mark should be distinctive and unique.
- Your mark should not suggest in any manner, the intended function, purpose, nature or quality of the commodity it pertains to, nor should it be suggestive or descriptive of its end use. To illustrate this, consider if a person wants to get a mark titled “Sweet Sugar”, pertaining to sugar as the main commodity intended to be sold under this mark. It will be a mark considered to be bad as per trademark law as it is suggestive of the quality of the commodity and not the commodity itself.
- Furthermore, your mark should be easy to pronounce and should be unique enough so it can be recognised and remembered amongst the rest. It should not be identical to other earlier marks which pertain to the same goods and services.
- Also, the mark which you intend to get registered must not be contrary to law or morality or religious susceptibilities, indecent, derogatory or insulting. It should not be deceptive or misdescriptive in its meaning or understanding.
Once you do construct a good mark and get it registered, your registered mark will be protected for a period of ten years, along with additional ten years upon payment of fees subsequently.
The process of registering a Trademark is fairly easy and quick, if you have the right attorney! Your attorney will conduct a search of marks which are similar looking/ sounding to your mark, and are already registered or are under consideration for being registered. This search is conducted at the Trademark Registry prior to filing it.
Once it has been established, after a thorough search, that there are no mark(s) similar to the one you want to get registered, existing in the Trademark Registry, your lawyer will move a TM - A application, for filing of the application, along with the requisite fee at the office of the relevant Trademark Registrar. The fee differs depending on whether the filing is done on behalf of an Individual, SME or Body Corporate. Whilst moving this application, it is a prerequisite to mention the name of the mark to be registered, the class in which you wish to get it registered (have a look at the NICE Classification for clarification), your name and office address or in the case of a Company, the name of the Company and the address where it has its registered office.
For stronger rights in the mark, you can mention the date from which you intend to use the mark or the date since which you have been using it.
Once your application has been accepted, the Registrar of Trademarks conducts a formalities check and prepares an Examination Report. The examination report, if not objected to, is deemed to be accepted. Subsequent to the acceptance is the publication of the mark in the Trademarks journal, where oppositions to the mark(s) are invited within the four months time from the date of publish in journal. If the mark is not met with oppositions the same is registered for a period of 10 years.
The Controller General of Patents, Designs & Trade Marks has its registered offices in New Delhi, Mumbai, Kolkata, Ahmedabad and Chennai.
Since Trademarks are source indicators of different products and services, any entity using a similar looking mark is effectively infringing the rights of the person who holds the rights to such a mark.
A Trademark infringement is a serious offence and can invite civil and criminal penalties against the offender. Protection of Intellectual Property is taken seriously because it puts at risk, a lot of money and time which business houses have invested in their goods/services.
Infringement of a Trademark is a common occurrence because unscrupulous entities wish to pass off their goods/services under marks which are well known in the market and have good reputation.
The Trademarks Act of 1999 provides efficacious remedy against infringers.
- Section 103 provides penalty for applying false Trademarks, trade descriptions and origin details. According to this, any person who falsifies a Trademark or falsely applies for a Trademark or indicates a false country, place, name or address of the goods and/ or tampers with the same shall be punishable with a maximum imprisonment of three years along with a fine which shall not be less than Rs.50,000/- and not more than Rs.2,00,000/-, provided that he intended to defraud.
- Section 104 provides that a person shall be punishable with a maximum imprisonment for three years along with a fine which shall not be less than Rs.50,000/- and not more than Rs.2,00,000/-, if he sells goods or provides services to which false Trademark or false trade description is applied, subject to certain conditions.
- Section 107 of the Act provides for imprisonment up to a term of 3 years along with fine if an unregistered Trademark is shown to be registered.
Apart from the remedies provided under the Trademarks Act, 1999, suit for damages can also be considered by filing the same in a civil court. A Criminal remedy can also be pursued against an infringer by the registration of a complaint against him under Sections 154 and 155 of the Code of Criminal Procedure, 1973.
In order to gain insight on infringement of Trademark(s), you should be aware of some famous Trademark disputes and adjudications. A reading of the following will give you a comprehensive picture of the same:
- Nestle v. Kit Kat Food Products: Originating from a refusal by the Kolkata Trademark registry with regard to Nestle’s plea to register “Kit Kat”, this dispute eventually led to Nestle’s win over their opponents. The Intellectual Property Appellate Board held that both the companies were engaged in providing confectionery items to a customer base of children. Also, it was never disputed that the mark was in use by Nestle since 1935. Holding that the mark which Kit Kat Food Products intended to get registered was deceptively similar to that of Nestle’s, the board ruled in Nestle’s favour.
- Louis Vuitton v. Louis Vuiton Dak: This battle was in Louis Vuitton’s favour where it stood victorious against its opponent Louis Vuiton Dak. The fact that the Louis Vuiton Dak was engaged in the business of hospitality as a restaurant was a surprising loss for them as both the entities were engaged in totally different classes of goods & services. A South Korean court held that the packaging and logo was notoriously mirroring the Louis Vuitton thus resulting in Louis Vuitton’s victory.
- Coca-Cola v. Bisleri: The Delhi High Court, while granting permanent injunction against the Defendant company held that it had infringed the Trademark “MAZAA” of the complainant company, Coca-Cola. Here, the complainant had authorised the defendant company, Bisleri, to use its well-known trademark “MAAZA” only with respect to the jurisdiction of India. The defendant company then started exporting its product to Turkey under the mark “MAAZA” which was a violation of their agreement with the complainant.
Trademark represents the goodwill of a business as it is the identification of source of the product or service. Contravention of Trademark by manner of unauthorised use results in actionable claims. When a proprietor of goods or services attempts at using another person’s registered trademark for their own goods or services without having the right to do so, they are said to be passing off their goods or services .
Passing off is a tort that applies to unregistered trademarks of goods and recently to services as well. It enforces a right against anyone who uses a trademark fraudulently to misrepresent his good and service as being that of the trademark holder. Passing off is used to protect the goodwill and integrity of the trademark owner and create a liability on anyone misusing it through misrepresentation.
For a claim to be actionable under passing off, it must fulfil three conditions of the Classic Trinity Test. The three principal conditions for passing off are-
It is to be shown that the owner of such unregistered trademark has built a reputation in his product or service. The trademark user has garnered some goodwill to his business and his product is known in the market through it.
Misrepresentation of Trademark
It is also important that there is a misrepresentation of a product or service to the customers under the trademark. It is not necessary that the misrepresentation is done willingly.
The final condition is, that such misrepresentation has caused some form of damage to the trademark owner’s reputation and goodwill in the market.
Therefore, for passing off action, misrepresentation must have caused some confusion in the minds of consumers as to the origin or source of the product or service which led to irreparable damages to trademark owner’s goodwill.