Trademarks are one of the various ways to protect your Intellectual Property. Intellectual Property constitute creations of human intellect. It can be referred to as a unique identity or expression. It could be a logo, design, literary work, artistic creation, sound, photograph, graphics or a combination of each/all of them. Such creations made from use of human mind are regarded as intangible assets, primarily because they have potential economic benefit.
For example: the idea to develop recipes to help manage a health condition like PCOS, a unique style of stitch or even a business as generic as selling mobile phones. It becomes necessary to protect these from unauthorised use and instances such as theft of the idea originally belonging to the creator.
Scope of Trademarks and why to register them
Trademarks apply to intellectual property that are categorised under sound, logo, words, phrases, colours, images, symbols, initials or a combination of them all. Essentially, Trademarks help differentiate between goods and services provided by enterprises of the same industries and otherwise.
The Fundamental reason to register a trademark is to protect it, since it is an intangible, intellectual property of a business. Trademarks are registered by the Controller of Patents, Designs and Trademarks authorized under the Trademarks Act of 1999. Recognised as a Registrar of Patents, Designs and Trademarks, the Controller operates under the ambit of the Ministry of Industry and Commerce for Trademarks, Designs and Patents. When a Trademark is registered it is legally protected from anyone who tries to copy, steal or use it without having the authority to do so as a result of which one is empowered with the right to sue.
On registration the intellectual property to obtain an ® it takes 6 months to 2 years. While the former is used during the process of registration the latter is obtained upon proper registration under a government body. Trademarks are valid for typically 10 years and can be renewed again upon expiry.
Registration of an Intellectual Property as a Trademarks can come with several advantages:
- It can make the business stand out from other industry competitors since a product endorsed with a registered trademark ensures trust and reliability in terms of quality.
- The legal protection provided to intellectual property via trademarks upon registration as discussed above gives the right to sue in case of any instances of infringement.
- A registered trademark for a product acts a unique asset, one which builds brand and can be contracted commercially.
- Once a trademark is registered in India it opens the opportunity to get the product or service recognised globally as filing for registration in India allows filing for registration in other countries.
- The registration of trademark is considered as a valuable investment with regard to its validity because as long as the business is running the product or service can be renewed in every 10 years.
- It leverages sources of revenue and attracts investors because there is a lot of value attached with those companies that protect their intangible assets.
- Registered trademarks often receive requests for partnerships from well reputed and genuine companies there by increasing the marketing of the product or services.
- As a result of registration it can be observed that the product is easier to identify and approach.
Infringements of a Trademark can be understood as the direct violation of a registered trademark. The exclusive rights attached to the use of registered trademark are infringed by the way of unauthorised use that is use of the trademarked product by any other person who is not the owner or licensee of the trademark. Another way a trademark is infringed is when copying or utilizing a trademark that has close resemblance to the one being infringed. Mentioned below are some instances that can be considered as infringing a trademark:
- A mark that is similar or deceptive to a registered trademark related to the same goods and services causing confusion to the population. If the trademark is used or advertised in a way that it causes unfair advantage and degrades the reputation of the honest product.
- If the trademark is used for labelling or packaging of other good without due authorization.
Infringement of a registered trademark invokes civil and criminal liability against the infringer. Sections 29 and 30 of the Trademarks act of 1999 deal with infringement and unlawful/unauthorised use of Trademarks. A person can be liable for infringement of a trademark indirectly if he knows of any infringement or contributes materially towards committing an infringement. When a trademark infringement is committed by an employee, his employer will be held liable. This is because trademark infringements recognise actions of a servant as the responsibility of the master as per the rule of vicarious liability. Circumstances of such are controlling the actions of a direct infringer, contributing to infringement and gaining monetary benefit from the infringement. Essentially a person is liable of trademark infringement when:
- There is falsification of a trademark
- It had been falsely applied to goods and services
- Mentions false geographical location or manufacturer of goods, this also includes alterations made to the indication of origin of the goods
- Creates, keeps or disposes any item which is made with an intention and purpose to degrade a trademark
Remedies against Infringement
- Interlocutory or Injunction/Stay/ad Interim Orders: Prohibits infringer from taking any other actions until the suit is disposed.
- Compensations for Damages caused: it includes handover of wrongful profits made by the infringer to the plaintiff.
- Handing over of goods: delivery of goods that have been infringed as well as the accounts of profits.
- While the punishments offences vary, an infringer can be sentenced to severe imprisonment for up to 3 years with or without fine.
Trademarks are a valuable asset unique to every business and hence must be protected by law. The consequences of not protecting one’s intellectual inventions costs a heavy toll on the profits of their businesses. There is emphasis being laid on registering trademarks in a very serious way but there is also a way to protect those trademarks that are not registered. Passing Off has emerged in the recent times, it protects those trademarks that are not registered from misrepresentations. It is essential to note that these misrepresentations must arise in the course of trade by a person who has an intention to cause harm to business or goods or services or attract customers in an unfair manner. Such misrepresentation must result in damages to targeted business. Trends like these show whether direct or indirect, registered or unregistered, a trademark infringement can result in serious liabilities. To be aware and to be take precautionary steps is the best possible way to avoid any instances as such.
Author: Barbie Singh, Senior Associate (assisted by K Manaswini Reddy).
Disclaimer: The content of this article is intended to provide a general guide to the subject matter and that the same shall not be treated as legal advice. For any queries, the author can be reached at firstname.lastname@example.org