TRADE MARK AND ITS PROTECTION

Meaning

A Trade Mark is a symbol, name, sign, image, slogan, word, device, or combination of colors used to identify an individual/company and goods/services supplied by them. A trademark must be capable of graphical representation and must be able to distinguish the goods/services of one person from that of another.

Thus, a Trademark is a sign or a symbol of an Individual/Company or products/services supplied by them in the market, distinguishing it from businesses dealing with similar products in the market. 

Examples

A few of the examples of well-renowned trademarks in different forms are given hereunder:

• Product Name: APPLE [for Computers and Electronic Devices]
• Word: Coca-Cola [a Brand Name for Soft Drinks]
• Color: Purple, Pantone 2685c [for Chocolate packaging and products, highly associated with the brand Cadbury]
• Symbol:  Nike Swoosh [curved swoosh design for identifying Nike Products] 
• Slogan: “I’m loving it”– strongly associated with McDonald’s AND “Because You’re Worth It”- for L’Oreal
• Combination: Starbucks [it combines the word ‘STARBUCKS’ with a device of “twin-tailed mermaid”] AND McDonald’s [the word MCDONALD’S with a golden device of ‘M’ and slogan ‘I’m Loving It’]

Trademark Registration

Trademark Registration grants the trademark owner exclusive rights to use the trademark, and to allow third parties permission to use the same. Registration allows the trademark owner to earn income by selling the trademark or licensing/ leasing the same.

Acquiring registration helps the Trademark owner earn a distinctive market position, allowing consumers to greatly associate the trademark and goods/services thereunder with the business of the Applicant/trademark owner.

Registration allows the trademark owner to strongly fight legal battles that might be raised against the use of their trademark/brand name in the market. Due to the allotment of registration, the Applicant’s (trademark owner’s) side greatly strengthens during such times.    

Trademark registration is territorial in nature. Hence, to acquire trademark registration it is to be filed under a national regional, or international office; through a prescribed process. To acquire trademark protection internationally, the applicant can either file an application specifically to each country where he wants to get registration or through WIPO’s Madrid system by filing a single application.  

Though the registration of a trademark is valid for a period of 10 years, it can be renewed every 10 years of its expiration date after paying the prescribed fee, if not cancelled due to any reason before its renewal.

Objective of Tradmarks Law

In the case of Dau Dayal vs The State Of Uttar Pradesh on 24 November 1958, the Hon’ble Supreme Court stated, “The object of the above provisions is to protect the rights of persons who manufacture and sell goods with distinct trade marks against invasion by other persons passing off their goods fraudulently and with counterfeit trade marks as those of the manufacturers…”. This highlights that the very objective of the Trade Marks Law is to protect the rights of the trademark owner. 

The salient features of the Trade Mark Act, of 1999, are as follows:

• Safeguarding the Trade Mark Owner’s Rights
• Prevent Confusion and Deception among the consumers
• Ensure Fair Trade Practices in the market
• Prevent third parties from taking undue advantage of the earlier trademark

Trademark Infringement

Since trademark infringement is both a criminal and a civil offense in our nation, police have the authority to make arrests without warrants upon FIR being filed against the offender/infringer. 

CRIMINAL PENALTY: A violation of a prior existing trademark can result in a minimum penalty of six months to three years of period in jail or a fine of up to two lakhs, but not less than fifty thousand, or both. 

CIVIL PENALTY: The infringer may also be the subject of a civil suit, which may result in the Court awarding:

• Temporary or Permanent Injunction (Stay Order)
• Damages to the party aggrieved 
• An order to the infringer to disclose the account of profits to the trademark owner
• An order to destroy the goods for which the infringer was using the infringing trademark

Moreover, the Court may also order the infringer to pay the costs of the legal proceeding.

Let us now refer to situations which may or may not amount to infringement of Trademarks:

Amounting to Infringement of Trademarks

• A sign or symbol identical or deceptively similar to the earlier registered trademark.
• Identicalness/ deceptiveness of a subsequent trademark causing confusion and deception amongst the purchasing public regarding the origin of the goods/services with the earlier registered trademark.
• Unauthorized use of a registered trademark for the purpose of product packaging.
• Enjoying the goodwill of the registered trademark without permission and taking undue advantage thereof in any manner.
• Harming the registered trademark owner’s rights associated with the registration of the trademark.
• When someone wrongfully associates themselves with the registered trademark owner by using a similar mark to mislead the consumers.
• Any verbal or visual representation of a distinctive element of a registered trademark in a way to confuse the consumers to form an association between the wrongdoer and the registered trademark owner.

Not-Amounting to Infringement of Trademarks

Certain situations are outlined in Section 30 of the Trade Marks Act, 1999, which establishes when a trademark cannot be considered infringed, including but not limited to: 

• When someone uses a trademark honestly and in good faith for commercial and business purposes and such use is not harmful to the distinctive character or reputation of the trademark
• When a person uses a trademark in relation to goods associated with the trademark owner or registered user, provided that the owner or user allowed this use and didn't remove the trademark.
• When the trademark is used to show the type, quality, quantity, purpose, value, origin, production time, or other features of goods or services.
• If a trademark is registered with conditions or limitations, using it in ways or places not covered by those conditions does not count as infringement.
• When a registered trademark is one of several similar trademarks, its use is allowed as part of the rights granted by the registration. 

• When someone uses a trademark honestly and in good faith for commercial and business purposes and such use is not harmful to the distinctive character or reputation of the trademark

Trademark Passing Off

Even if a person using a trademark in the course of trade has not acquired trademark registration still the person is entitled to claim exclusive ownership of the subject trademark. 

In this case, if a third party starts using the earlier adopter’s and user’s trademark for the purpose of supplying goods or services without the consent of the owner, then the original adopter/prior user has the right to restrict the third party from passing off of their goods or services.

The very objective in this scenario is to restrict third parties from portraying themselves or their trading activities to have any sort of association with the original trademark adopter/user.

However, to prove the prior claim over such a trademark, the original adopter/user will have to provide sufficient documentary evidence in their support to strengthen their case.

Conclusion

Acquiring trademark protection is very important in the present era of a fast-paced environment where competition has increased and third parties are looking for ways to use a well-renowned trademark to supply their products/services which further results in causing damage to the prior trademark adopter/user. 

Consulting a Trademark Attorney is highly recommended for the purpose of gaining comprehensive knowledge.