Trademark: The Intellectual mark
Published: Jun 12, 2017
By Vandana Goel
During the British regime in India the merchants and businessmen who had established their mark in the market in respect of certain goods under the particular brand name, style or design felt they should continue to be sold or traded under the same brand name, style or design and no other person shall be allowed to adopt that brand name, style or design. The Government then enacted the Indian Merchandise Marks Act, 1889 and with development and changes, on 25th November 1958 The Trade And Merchandise Marks Act came into force. Currently Trademark act 1999, is under force. First of all we will discuss what is trademark and benefit of that and simultaneously we will see which marks can be registered as trademark and which not.
A trademark is a mark used in relation to goods for the purpose of indicating a connection between the goods and some person having the right as proprietor to use the mark. It is a visual symbol in the form of a word, device or a label applied to articles of commerce with a view to indicate to the purchasing public that they are goods manufactured or otherwise dealt in by a particular person or a particular organisation as distinguished from similar goods manufactured or dealt in by others. A trademark serves the purpose of identifying the source or the origin of goods. Trademark identifies the product and it's origin.It proposes to guarantee its quality.It advertises the product. The trademark represents the product.It creates an image of the product in the minds of the public particularly the consumers or the prospective consumers of such goods.
Consumers' purchasing decisions are influenced by trademarks and the reputation such brands represent
There are few MARKS NOTREGISTERABLE:
- The use of which would be likely to deceive or cause confusion.
- A mark, the use of which would be contrary to any law for the time being in force.
- A mark comprising or containing scandalous or obscene matter.
- A mark comprising or containing any matter likely to hurt the religious susceptibilities of any class or section.
- A word which is the accepted name of any single chemical name or chemical compound in respect of chemical substances.
- A geographical name or a surname or a personal name or any common abbreviation thereof or the name of a sect, caste or tribe in India.
In Trademark Act, 1999 the definition has been widened to include the 'color combination' and 'shape of goods.The new definition of 'service mark' has been included for the benefit of service-oriented establishments such as Banking, Communication, Education, Finance, Insurance, Chit funds, Real Estates, Transport, Storage material treatment, Processing, Supply of electrical or other energy, Boarding, lodging, Entertainment, Amusement, Construction, Repair, Conveying of news or information and advertising
There are several forms of a trademark based on their characteristic and features, the major division of trademark types are done based on their categories. However, in India, a product mark, service mark, collective mark, certification mark, shape mark, pattern mark and sound mark can be registered as a trademark. Following are the marks discussed in detail:
1. Product Mark:
A product mark is similar to trademark only, but it is to identify the products or goods instead of services. Herein the product is the unique selling feature of the company. To safeguard the product category and avoid any duplicity of the same a product mark is registered.
Initially, the product marks are denoted by TM, which states that the mark is not yet registered but in the process of registration. Once they are registered, they have to use ® to give it recognition in the market. This applies to all types of trademarks.
So product marks are those that are attached to the goods and products specifically to give it a distinct identity in the marketplace.
Examples: Pepsi®, Maggi®, Variety etc.
2. Service Mark:
This type of trademark is used to identify and distinguish the services rather than the products provided by any enterprise. The service mark is for the intangible products which include the action of helping or doing work for someone; it can also be a system supplying public needs such as transport, communication or other utilities such as electricity, water, etc. Service marks are also applicable for the routine maintenance or repair work.
The Service marks have their particular symbol which is SM and not TM. A very prominent example is McDonald's, which is a service mark for restaurant services.
There is a very thin line of difference between other trademark and service mark so many companies end up having both.
3. Collective Mark:
As the name suggests these marks are linked with a group of people and not one single product or service. These trademarks are primarily owned by an organization, institutes or any association that is related to several members.
The Collective marks are used by the members to identify themselves with the level of quality or accuracy, also geographical origin or other characteristics set by the organization they are related with.
Collective trademarks are "Badges of origin" which indicates the source of the individual. A variety of traders uses not only individuals but the collective marks provided that the trader belongs to that association.
To get a collective trademark certain regulations are to be fulfilled by specifying the following information:
- The name and seat of the organization,
- The complete valid information contact details(name, address, etc.) about the members under that association,
- The conditions of membership is also required to be mentioned,
- Mentioning the terms & conditions are applicable for using collective trademark,
- The prescriptions relating to the control of the use of the collective trademark,
- The order of proceedings against unauthorized use of the collective trademark.
Examples are like "CA" device is used by the members who fall under Institute of Chartered Accountants; another example is "CPA" which denotes members of the Society of Certified Public Accountants.
4. Certification Mark:
The certification mark is created to show the standard of a company i.e. it is to show that a trader's goods or services are certified as meeting particular standards. The issue of certification mark states that the product has successfully passed a test that further says about a certain standard that is reached by the product.
It assures the consumer that the manufacturers have gone through regular process of audit to ensure the standard of production. The certification mark identifies the origin, material, and most importantly, the quality of the goods and services that separates a particular brand/company from the competitors in the market. These marks are used to access the worth of labor in manufacturing goods and services.
In brief, Certification marks are used to define "standard" of goods and services. Example: Woolmark, which is certified for the fabrics on clothing, Agmark, and ISI.
5. Shape marks:
These marks can also be categorized in Trade Dress wherein, other than the logo, label, and other identifiable symbols; a product can also be distinguished based on its packaging. By shape, it means the 3-D marks which are capable of making a difference in the goods and services of one businessman from another. There is a new Trade Marks Ordinance (Cap.559) which permits registration of such marks.
The above image will help you understand the basic difference between Shape Marks and all other trademark types.
To give you a more clear idea this is an example of shape mark which the Mogen David wine bottle has registered for serving wine bottles: This is specifically known as trade dress and the uniqueness can be protected under principles of trademark.
The competitors however intended to create confusion by labelling similar bottles but Mogen David was able to stop them and revive its original distinctive nature to use it as a trademark in the market.
To sum up shape trademarks , it has facilitated promotion of products and emerged into the trademark type after the technological advancement of graphics and other forms of animation technology. The graphical representation which is able to make a difference amongst the products can be shape marked.
6. Pattern Mark:
The general meaning of pattern is a repetition of similar design, so it is a type of trademark wherein the pattern is able to distinguish the product and services of one brand from another. These are difficult to be distinguished and have high chances of infringement with near similar designs.
They at times, fail to make a distinction and the registration would not be accepted unless they have evidence of distinctiveness.
A repeating pattern mark is any mark that is composed of a single element repeated to form a combination of designs, numbers, letters, or other characters, forming a complete pattern that is displayed on goods, on product packaging, the pattern can also be associated with the material, advertising or provision of services.
In a repeating pattern mark, the repeating pattern/element is to be mentioned specifically in the application for registering the trademark for avoiding any confusion.
There are chances the pattern mark can be rejected based on the below-written reasons:
- Common or Widely Used Pattern
- Pattern Creates a Distinct Commercial Impression Apart from Other Matter
- Nature of Elements in the Repeating Pattern.
- Industry Practice
- It can be rejected because the mark fails to function as a source indicator.
7. Sound Mark:
There has been an introduction of another form of trademark where the "mark" is of sound graphics that distinguishes the products and services of one from the other. Only those notations of sound that are graphically represented can be registered as trademarks. Sound marks being audio form of trademark is challenging but to figure out the accurate nature of the sound mark based on its registration, there needs clarity in graphical representation of the sound design.
The sound logo can comprise musical notes, words and sound graphics. The first Sound Mark to be registered in India was Yahoo yodel followed by Nokia tune.
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Dr. Reddy's Laboratories Limited Vs. Manu Kosuri & Another 2001 PTC 859 (Del) |
"…plaintiff's trade mark is 'DR. REDDY'S' and the defendants trade mark/domain name is 'drreddyslab.com'. Plaintiff is the proprietor of the trade mark 'DR. REDDY'S' by virtue of priority in adoption, continuous and extensive use and advertising and the reputation …" |
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Tata Sons Ltd. Vs. The Advanced Information Technology Association Case No. D2000-0049 WIPO Arbitration and Mediation Center |
"From a reading of the complaint and the documents filed with it, it is abundantly clear that the name/mark TATA is a "well-known mark" |
Different goods and services have been classified by the International (Nice) Classification of Goods and Services into 45 Trademark Classes (1 to 34 cover goods, and 35 to 45 services).
The idea behind this system is to specify and limit the extension of the intellectual property right by determining which goods or services are covered by the mark and to unify classification systems around the world.
The renewal of registration of a trademark should be made for every ten years instead of seven years under the present Act.
REGISTRATION
- WHO CAN APPLY
Any person who claims to be a proprietor of a trademark and is desirous of registration of the mark can apply. The application may be made in the name of an individual, partners of a firm, a Corporation, any Government Department, a trust or joint applicants
- APPLICATION
After completing all specifications on the prescribed application form, an application form(TM -A shall be filed in the office of the trademark Registrar "within whose territorial limits the principle place of business in India of the applicant or in the case of the joint applicants the principal place of business in India of the applicant whose name is the first mentioned in the application, as having the place of business is situated.
- According to Trademark Rules, 2017 where applicant is individual / startup/ small enterprise then fee for Physical application ( TM-A) would be Rs. 5000/- and for other it is 10,000/- . further for E- filing 10% would be discounted.
-Upon submission of an application for registration of a trademark, there can be four outcomes:
- a. The application is accepted as it is.
- b. The application is accepted subject to certain amendment.
- c. The application is accepted but latter it is found to have been accepted in error.
- d. The application stands rejected.
ADVERTISEMENT
- Soon after acceptance of the application, the application is advertised in the Trademarks Journal.
Any person may, within three months from the date of the advertisement or re-advertisement of the application for registration or within such further period not exceeding one month, give notice in writing to the Registrar of opposition to the registration. If such an opposition does not arise then the mark is deemed to be registered.
- TIME PERIOD -The registration of a trademark shall be for a period of ten years, but it may be renewed from time to time.
INFRINGEMENT
Infringement of a trademark occurs if a person other than the registered proprietor in the course of trade, in relation to the same goods or services for which the mark is registered, uses the same mark or deceptively similar mark.
ESSENTIALS OF INFRINGEMENT
1) The taking of any essential feature of the mark or taking the whole of the mark a few additions and alterations would constitute infringement.
2) The infringing mark must be used in the course of trade, that is, in a regular trade wherein the proprietor of the mark is engaged.
3)The use of the infringing mark must be printed or usual representation of the mark in advertisements, Invoices or bills. Any oral use of the trademark is not infringement.
4) Any or all of the above acts would constitute infringement.
HOW TO PROTECT YOUR TRADEMARK?
A trademark is the backbone of a brand. Therefore, protecting it is crucial to its success. This article lists down a few steps such as searching for similar marks, evaluating existing trademarks and conflicts, filing an opposition and using the R symbol for protecting your mark as well as what to do in case you find someone infringing on your trademark.
Trademarks in India may be registered or unregistered under the Indian Trademarks Act, 1999 ('the Act').
It may surprise you to learn that your trademark receives some legal protection, even if it's not officially registered with the concerned authority. Such protection for unregistered marks is based on common law, which unregistered trademarks (denoted by 'TM' symbol in superscript) obtain simply from use.
While the extent of protection is limited but it is still protected against infringement. You can pursue legal steps against the infringer who is misusing your trademark by proving that it's a valid trademark, and you have been using it before the culprit infringed upon it.
Below are a few possible steps you can take to protect your trademark:
1. Search for Similar Marks:
One of the best ways you can protect your trademark is to look for marks that appear similar to yours. Being on the lookout for things as such can help you deal with possible infringements and ensures that your trademark is not misused/misrepresented by third parties.
2. Evaluate Existing Trademarks for Conflicts:
This is valid for people who want to register a trademark and want to address any conflicts that may arise in the future. Ensure that you always do a cross check of existing trademarks in the market to avoid any objections that could arise out of it.
3. File an Opposition:
If you find a particular trademark and feel that it's violating yours, then you should file for opposition.
Always use the ‘R' symbol to let people know that your trademark is registered. This is one of the best ways you can protect your trademark since doing so sends out a signal that your trademark is registered and anyone copying it would be infringing upon it.
REMEDIES
- The proprietor of a trademark has a right to file a suit for infringement of his right and obtain
- Injunction- an injunction restrains the defendant from using the offending mark pending the trial of the suit or until further orders.
- Damages in assessing the damages the important question is what is the loss sustained by the plaintiff. The loss must be the natural and direct consequence of the defendant's acts. The object of damages is to compensate for loss or injury.
- Accounts of profits. Where a plaintiff claims the profits made by the unauthorised use of his trademark, it is important to ascertain to what extent he trademark was used, in order to determine what proportion of the net profits realised by the infringer was attributable to its use.
(Author is a Practicing Company Secretary)
