INTRODUCTION
Pursuant to section 2(1) (zb) of the Trademarks Act, 1999 (“Trademarks Act”), a ‘trademark’ is defined as “a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours.” Generally, a trademark can be a brand name, logo, slogan, or any other unique indicator which is a recognizable sign, design, or expression which distinguishes a product or service in the marketplace. Trademarks are used to protect the reputation, goodwill and unique identity of a business or organization.
A mark can be registered as trademark under the provisions of the Trademarks Act in order to ensure its adequate protection of ownership rights of such mark and to negate any violation of reputation, goodwill and unique identity of the business.
This Article aims to provide a general overview on the concept of ‘trademarks’ under laws of India, including the benefits and process for registering a mark as a trademark, and certain recommendations towards actions to protect a trademark.
TYPES OF TRADEMARKS
The Trademarks Act recognizes the following types of trademarks:
- Word marks: This consist of words, letters, numbers, or a combination of both which are used to identify a company and/or a brand and to distinguish such company and/or brand from other similar entities.
- Symbol mark: This consist of logos or designs that are used to identify a company or brand. They can either be a combination of words and symbols or just symbols alone.
- Shape marks: This consists of a specific shape, such as the shape of a bottle or packaging, that is used to identify a product or brand. The shape must be distinctive and non-functional in order to be protected as a trademark.
- Sound marks: This consists of a specific sound, such as a jingle or a catchphrase, that is used to identify a product or brand. The sound must be distinctive and non-functional in order to be protected as a trademark.
- Ordinary trademarks: These are used to distinguish the goods or services of one person from those of the others in the course of trade. They can be words, logos, labels, or any other signs that is capable of being represented graphically.
- Service marks: These are used to distinguish the services of one person from those of others in the course of trade. They are similar to ordinary trademarks but are used in relation to services rather than goods.
- Collective marks: These are used by the members of a group, association, or organization to distinguish the goods or services of its members from those of others in the course of trade.
- Certification marks: These are used by the owner to certify that the goods or services of others conform to certain standards of quality, origin, or other characteristics. The owner of a certification mark is not allowed to use the mark in relation to its own goods or services.
- Well-known trademarks: These are trademarks that have acquired a reputation in the Indian market and are widely recognized by the public. Such trademarks are entitled to a higher level of protection under the Trademarks Act.
GENERAL OUTLINE FOR TRADEMARK REGISTRATION
In India, the legal process for registering any trademark involves the following five (5) steps:
Step 1 – Conduct of trademark search:
Before filing a trademark application, it is important to conduct a thorough search of the existing trademarks registered or pending registration. This is important to ensure that the proposed mark is not similar to any existing trademarks and is not likely to cause confusion.
Step 2 – Filing of a trademark application:
The application for registration of a trademark needs to be filed with the Trade Marks Registry (“Registry”) of the Indian Intellectual Property Office (“IIPO”), along with the required documents and fees. The application should include the proposed trademark, the class of goods or services that it relates to, and a declaration of use or intended use of the mark.
Step 3 – Examination of the application:
Upon completion of filing, the application shall be examined by the Registry to ensure that it complies with the necessary legal requirements. The examiner may raise objections and/or require additional information from the applicant.
Step 4 – Publication of the trademark:
Wherein if the application is accepted, it will be published in the trade marks journal (which is a gazette of the IIPO). The rationale behind doing so is to providing an opportunity for any person to file an opposition to the registration of the trademark within a specified period.
Step 5 – Hearings and registration:
Wherein if no opposition is filed against the application, or if any opposition is successfully overcome, the trademark will be registered by the Registry. The registration certificate will be issued to the applicant, which will be valid for a period of ten (10) years from the date of application and can be renewed after the completion of previous ten (10) year period.
TRADEMARK INFLUENCE IN BUSINESS
A trademark represents the reputation and goodwill of a business and helps to create a unique identity and image for the business in the marketplace. Therefore, it is vital for any business to develop a unique trademark to distinguish itself from its competitors and stand out to its customers. In practical terms, a business uses a trademark to promote its goods or services and to create customer loyalty. It can be a word, logo, slogan, or any other type of symbol that is associated with a business and its products or services. Further, by registering the same, a business can legally protect its intellectual property rights and prevent any other person from using similar mark. Trademarks also plays an important role in advertising and marketing. They help to create brand awareness and communicate unique features and benefits of the business’s products or services. Moreover, trademarks can also be considered as important assets for any business. They can be sold, licensed, or used as collateral for loans. They also have an economic value that can increase over time, especially if the business becomes successful and the trademark becomes well-known.
Pursuant to the above, it can be reasonably understood that a trademark is a valuable tool for any business, as it helps to create a unique identity and image, to promote products and services, to build customer loyalty, and to protect the business’s intellectual property rights.
INFRIGNMENT OF TRADEMARKS
Infringement of a trademark refers to the unauthorized use of a mark that is identical or similar to a registered trademark by a third party, in a manner that is likely to cause confusion among consumers as to the origin or sponsorship of the goods or services. This occurs when the infringing party uses the mark on their own goods or services, or when they manufacture or sell infringing goods bearing the mark. Trademark infringement can take various forms, such as:
- Counterfeiting: This refers to the unauthorized manufacture or sale of goods that bear an identical or substantially identical mark to a registered trademark, without the permission of the trademark owner.
- Passing off: This refers to the use of a mark that is similar to a registered trademark in a manner that is likely to cause confusion among consumers as to the origin or sponsorship of the goods or services.
- Dilution: This refers to the unauthorized use of a mark that is identical or similar to a well-known trademark in a manner that dilutes the distinctive character of the well-known mark.
- Cybersquatting: This refers to the registration of domain names that are identical or similar to registered trademarks with the intent to profit from the goodwill associated with the marks.
It is important to note that, not all forms of use of a mark, that is identical or similar to a registered trademark, will constitute infringement. In order for infringement to occur, the use of the mark must be in relation to goods or services that are identical or similar to those for which the registered trademark is protected and must be likely to cause confusion among consumers. The burden of proving trademark infringement is on the trademark owners and they must prove that the use of the mark by the infringing party is reasonably likely to cause confusion among consumers.
ADVANTAGES OF REGISTERED TRADEMARKS
There are several advantages of trademark registration. Registration of a trademark confers an exclusive right to the concerned owner for using the mark in relation to the goods or services specified in the registration, and to take legal action against any unauthorized use of the mark by third parties. Similarly, a registration would provide an exclusive right to the owner to use the mark in relation to the goods or services specified in the registration, help to create brand awareness and recall, and to communicate the unique features and benefits of the business’s products or services. A registered trademark can also act as a deterrent to potential infringers, as it provides the owner with the legal means to prevent others from using the same or similar marks in relation to the same or similar goods or services.
Further, it is reiterated that trademarks are an important asset for any business as they can be sold, licensed, or used as collateral for loans. They have an economic value that can increase over time, especially if the business becomes successful and the trademark becomes well-known.
The trademarks can be licensed or assigned to third parties, allowing the owner to generate revenue from their use and providing an additional means of protecting their intellectual property rights. In today’s digital age, E-commerce is growing rapidly. A registered trademark can help the owner in creating a website, social media account and listing on online marketplaces, making it easier to reach a wider audience and conduct business online.
LANDMARK CASE LAWS
With the development of global trade and commerce alongside the development of the digital era of doing business, trademarks and intellectual property have gained importance as assets for any business. Therefore, in India the judicial authority of the nation has made some landmark judgements over the years to help reduce the risk of infringement and protect business and personal assets and monetize the same for revenue and profit.
In the case of Yahoo!, Inc. v. Akash Arora [1], the Delhi High Court held that a domain name serves the same function as a trademark and is thus entitled to equal protection under the law. The Court found that the similarity between the plaintiff’s domain name, “Yahoo!”, and the defendant’s domain name, “Yahoo India!”, created a likelihood of confusion and deception among internet users, leading them to believe that the domain names had a common source or connection. The Court further held that the defendant’s disclaimer was insufficient to mitigate this confusion, as the nature of the internet is such that a disclaimer cannot compensate for a similar domain name. The Court acknowledged that the plaintiff had acquired uniqueness and distinctiveness in association with the name “Yahoo!”. In similar case of In Rediff Communication v. Cyberbooth & Others [2], the Bombay High Court also observed that the value and importance of a domain name is similar to that of a company’s corporate asset.
In the case of MilmetOftho Industries & Others v. Allergan Inc. [3], the Supreme Court of India extended the protection afforded by Indian trademark law to a well-known foreign brand. The Court barred an Indian company from using the OCUFLOX trademark, despite the fact that the US company had not used the mark in the Indian market and that the mark had not been registered in India. The Court held that the respondent in this case, the US company, was the first to enter the global market and use the mark. The Court further held that the fact that the respondent had not used the mark in India was irrelevant, as the company had established rights to the mark by being the first to enter the international market. The Court emphasized that in the fields of healthcare and medicine, all possibilities of deception and confusion should be avoided in order to protect the public interest.
In the case of Babu Ram Dharam v. Izuk Chemical Works [4], the plaintiff, Izuk Chemical Works, is a company that sells herbal beauty products such as herbal henna and henna powder. The plaintiff alleged that they have been using the trademark “MOONSTAR” and a logo depicting a star in the lap of the moon since 1917 and 1998 respectively. The defendant, however, was found to be selling similar products under the trademark “SUPERSTAR” with similar attributes, such as the same color, woman, words, fonts, and so on. The defendant’s cartons were also found to be similar enough to confuse an ordinary person with the plaintiff’s cartons. The plaintiff sought a permanent injunction from the court to stop the defendant from using the infringing trademark and logo. The Delhi High Court, after hearing the arguments from both parties, found that the Defendant’s trademark contains the essential elements of the plaintiff’s trademark and that the defendant’s logo also possessed similar attributes to the plaintiff’s mark. Based on these factors, the court determined that there was a prima facie case of infringement and ordered the defendant to stop using the infringing trademark and logo in conducting their business.
Author: Barbie Singh, Senior Associate (assisted by Ajay Thakur).
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 info@samistilegal.in
END-NOTES
- 1999 (19) PTC 201 (Del)
- 2000 PTC 209
- Civil Appeal No. 5791 of 1998
- (2008) SCC OnLine Del 1734
