-An article by Lavanya Goinka
A trademark is any word, name, symbol or device used to identify and distinguish goods and/or services from those of others. Trademarks also indicate the source of the goods, even if that source is unknown to the consumer. In modern times, a consumer usually does not know the manufacturer of the goods personally, unlike before the beginning of the Industrial Revolution, when there was a limited number of manufacturers and every consumer used to know the manufacturer personally.
Apart from these, trademarks can be logos, aromas, sounds, personal brand names, slogans, smells, etc. Even specific colours can be trademarked under specific brands, such as UPS Brown (also known as Pullman Brown), Home Depot orange, Tiffany blue or John Deere green, etc.
In other words, trademarks can be almost anything that distinguishes the products and/or services from others and signifies their sources.
The rationale for granting legal protection for trademarks is that they are a type of intellectual property that demonstrates the standard of quality of products and/or services mainly based on goodwill, and provides legal protection to your brand from fraud and counterfeiting..
What is a trademark
A trademark is the characteristics or combinations of characteristics capable of distinguishing the goods and/or services of one enterprise from those of other enterprises. Trademarks fall under the ambit of intellectual property rights and are protected by national and international laws.
Examples of trademarks include the Nike “Swoosh” symbol, the arched M for McDonald’s or the bitten apple symbol for Apple computers, etc.
Under The Trade Marks Act, 1999, the word “mark” is defined under Section 2(1)(i)(V)(m) as “a device, brand, heading, label, ticket, name, signature, word, letter, numeral”. The term “Mark” under the Act also includes the shape of goods, packaging, or combination of colours or any other type of combination.
Section 2(1)(i)(viii)(zb) in the Trade Marks Act, 1999 defines trademark as a mark which is:
- capable of being represented graphically;
- capable of distinguishing the goods or services of one person from those of others;
- may include the shape of goods, their packaging and combinations of colours.
Section 2(1)(i)(viii)(zb)(i) in the Trademarks Act, 1999 mentions about registered trademarks for goods and services and further states that the person has the right to use the mark as the proprietor.
Section 2(1)(i)(viii)(zb)(ii) in the Act states that a person has the right to use the mark either as a proprietor or a permitted user whether with or without any indication of the identity of that person. The proprietor or a permitted user can also use a certification trademark or a collective trademark in this regard.
Functions of a trademark
The following functions are performed by a trademark:
- Firstly, a trademark indicates the source or origin of the goods, products, or services. In this case, it is presumed that any particular good can have only one origin.
- It assures the quality of the goods bearing the trademark to the consumers.
- Apart from the quality which is related to the goodwill of the product, the trademark also creates brand awareness and serves the marketing purposes and advertising aspects. In other words, companies put a great amount of resources into developing any product, marketing it to customers, providing customer support and backing up their products with warranties. Trademark assures that the effort to serve the consumers pays back.
- Provides legal protection and guards against counterfeiting and fraud of a particular brand.
- Finally, trademarks are used to differentiate the product from others. This is the distinguishing factor that falls under distinctiveness. The idea is that trademarks would distinguish marketed goods and services from those of competitors.
Subject matter of trademarks
Though trademarks are often classified as intellectual property, the US Supreme Court held an important decision in the famous 1879 Trademark Cases, a consolidated set of three cases, namely United States v. Steffens; United States v. Wittemann; and United States v. Johnson, respectively, dealt with alleged counterfeiting of marks related to champagne for the first two cases and in the third case, Johnson dealt with alleged counterfeiting of a mark of whiskey.
The Court ruled that Congress has no power to protect or regulate trade marks under the intellectual property clause of the US Constitution. The clause provides Congress with the authority to regulate and protect copyrights and patents.
However, the Court did not entirely exclude the possibility of Congress regulating trade marks. The Commerce Clause of the Constitution gives Congress the power to regulate commerce with foreign nations, among several states and tribes. Under this clause, the US Congress is also empowered to regulate trademarks for commercial purposes.
Beyond trade marks, there are also other types of marks that also fall under the category of trademarks. The only difference is that they distinguish one particular characteristic of the goods or product (such as shape, colour, service, sound, etc) instead of distinguishing between any goods or products.
Trade dress is another legal term of art that generally refers to the characteristics of the visual appearance of a product or its packaging that indicate the source of the product to the consumers. Trade dress or product packaging may also be protected under trademark laws.
Different types of trademarks
The term trademark also describes any of the following types of marks. While trademarks identify products including physical goods and commodities, there are also other types of trademarks that protect different aspects of any product. However, the basic purpose of all types of trademarks is to help consumers distinguish and differentiate between similar products. Following are the main types of trademarks that can be registered:
Service marks are exactly the same in principle as trademarks. However, the words, names, symbols, or devices identify and distinguish the source of a service. Service mark serves as a brand identifier. Service marks are used in services such as sponsorship, management and investment, various services such as hotels, entertainment, real estate services, etc. Examples of service marks include the golden arches of McDonald’s or the phrase “Just Do It.” used by Nike.
A certification mark is any word, phrase, symbol or design or a combination of any of these, owned by one party that certifies that the goods and services of another party meet certain standards or requirements. A certification mark identifies either the nature of any product or service. Examples of certification marks include star ratings in electrical appliances based on the consumption of energy or the ‘India Organic’ certification mark for organically produced farmed products in India.
A collective mark is used by members of any association collectively or any collective group to identify the source of goods or services. It indicates a mark which is used for goods, services and for a group of organisations with similar characteristics. The organisation or group uses this mark for multiple people in a group organisation.
Collective marks are of two types: collective trade and service marks and collective membership marks.
Collective trade and service mark
A collective trade or service mark is any word, phrase, symbol or design that is owned by any co-operative, association, collective group or organisation and is used by the members to indicate the source of goods or services. Examples of collective trademarks include the marks used by various lobby groups. One of the commonly known collective trademarks is CA used by the Institute of the chartered accountant.
Collective membership mark
A collective membership mark is used to indicate that a person is a member of some organisation, such as a trade union or an association like the Rotary Club. However, it is not used to identify the source of goods and services.
Trade dress refers to features of the visual representation of any good or product or its packaging that tell the source of the product to customers. It is implemented to protect consumers from getting deceived or confused due to the packaging or appearance of goods that are framed to replicate the original goods in question. Examples of trade dress include the cherry red sole of a Christian Louboutin shoe or grills of the Rolls Royce car.
Apart from the abovementioned, some other types of non-conventional trademarks that fall under the category of trademark are as follows:
- Wordmark comprises any standalone word or words. They are used for business purposes. Examples of wordmarks include words such as ‘FedEx’ or ‘Coca-Cola’ etc.
- Lettermark contains only one letter, initials or an abbreviation. Examples of lettermarks are NASA, the abbreviated version of the National Aeronautics and Space Administration, a space agency of the US Government or ISRO, the national space agency of India also known as the Indian Space Research Organisation. The double C mark of the French branch Chanel or the YSL mark of Yves Saint Laurent, a luxury brandalso falls under lettermarks.
- Logomark only contains a symbol without any words but at the same time it encodes a brand message. However, it requires advertisement reports to make this mark recognisable. Examples of logomark include the famous bitten apple of the Apple company.
- Combination mark is a combination of a lettermark and a wordmark or a combination of a symbol and wordmark. Examples of combination marks include the globe symbol with the word Wikipedia written in capital letters or the trademark of Adidas. They are also known as device marks.
- Colour mark is the specific colour that serves as the trademark purpose of any business. The colour should have definite and unique Pantone codes. One of the most popular colour marks is the Tiffany blue colour, a specific shade of cyan used for the jewellery boxes by the jewellery company Tiffany. Under the colour mark, brands can also file their own colour combinations.
- Shape mark is a trademark that protects the specific shape of any product. Common example of a shape mark is the unique shape of bottles or containers of the products of specific companies which no other company can copy or replicate such as the shape of Cadbury chocolate or the unique shape of the bottle of Coca-Cola.
- Motion mark is a unique graphics animation, animated computer sequence, or short video used by the companies for the product. Popular motion marks include Nokia’s open screen with a handshake, the car door motion of Lamborghini or the animated graphics of picture companies, such as Paramount Pictures just before the beginning of the movies.
- Sound mark is a trademark where sound is used to identify the source of the goods and products. They include business jingles or specific sounds used by companies. One of the examples of sound marks includes the default ringtones of smartphone companies such as Apple or Samsung.
Essentials of a valid trademark for registration
Despite the vastness of the potential subject matter of a trademark, there are some limitations on what constitutes a valid trademark. In an US case of New York Pizzeria v. Ravinder Syal (2014), a restaurant asserted its trademark rights in the flavour of one of its pizza. One of the former employees of the restaurant allegedly stole the recipe and opened up a competing pizza joint, selling pizzas that tasted a lot like those made by the restaurant.
A District Judge rejected the argument and dismissed the case, stating that it is unlikely that flavours can ever be ‘inherently distinctive’ since they do not suggest the source of the product.
The basic requirements for a valid trademark are as follows:
Firstly, a trademark has to be any symbol or words which the court or the trademark office deems to qualify.
Secondly, the trademark has to be used for commercial purposes.
Thirdly, the trademark has to identify and distinguish the goods, products or services from those of others.
Finally, a trademark has to be distinctive.
Principle of distinctiveness in a trademark
The case of Abercrombie & Fitch Company v. Hunting World (1976) laid down the basic principles of distinctiveness. Here, a spectrum of distinctiveness to assess the strength of a mark has been laid down. This spectrum goes on from the strongest mark being a fanciful mark to the generic mark being the weakest. The spectrum of absolutely protectable, easy, and strong marks to the weakest and not protectable as laid down in this case is described below.
A fanciful mark is one that is absolutely imaginative, creative, and never known to the world before. The best example of such would be any invented word such as Kodak for camera. The word ‘Kodak’ has no such meaning, but when attached to the service of a camera, it goes on to inherently become distinctive and new. Therefore, it is easily identifiable by the consumer looking to buy up and purchase a camera from Kodak.
The next strength of a trademark would be assessed on the basis of arbitrary marks. ‘Arbitrary’ in a sense would mean something which is not reasonable.
Therefore, in arbitrary marks, the meaning of a separate word is attached and juxtaposed to the goods and services, which is different from the characteristics of the word and goes on to build a new meaning.
The best example of an arbitrary mark is ‘Apple’, the US-based company specialising in consumer electronic goods and software services. Apple is the name of a fruit, and no consumer electronic goods are related to fruits. However, when words such as ‘Apple’ are attached to those specific services, they go on to evolve a new meaning. The word attaches itself to consumer electronic goods, and a consumer looks to buy products which are labelled as ‘Apple’ because the products originate from a particular company and have a certain quality standard.
The next standard for a strong trademark is a suggestive mark. A mark would be known as ‘suggestive’ when a certain degree of imagination leads the consumer to associate and identify that mark to the goods. For example, a consumer is able to reach a conclusion as to the nature of the goods without describing the quality of the goods.
The best example of a suggestive mark is ‘Jaguar’ for a fast car. Jaguar is a fast animal. When the word ‘Jaguar’ is attached to any car, it essentially suggests that these cars are fast-moving vehicles, and this is what a consumer goes on to understand from such labelling.
Descriptive marks, as trademarks, are weak and unacceptable because they describe the character or the quality of the mark through itself. Therefore, they are not helpful in distinguishing goods and products since most of the goods in the same category would have the same distinguishing feature, thus making a descriptive mark a weak trademark.
An example of a descriptive mark is ‘Lenskart’, an Indian company dealing with eyeglasses and optical lenses. Lenskart literally means a cart of lenses. The aim of using descriptive marks should essentially be to protect the public by keeping descriptive signs, indications, and features so that no other trader goes on to have a monopoly like right over these words which are available in the public domain.
A generic mark is one that refers to the genus under which the particular product is a species. Essentially, these words are customary to use in any trade. Therefore, they are taken away from the domain of protectability as trademarks.
An example of such would be naming a milk product as ‘Milk’. Since milk is a customary word daily used in business, it has no protectability as a trademark. However, if it is named ‘Milkmaid’ for condensed milk or ‘Dairy Milk’ for milk chocolate, it will be acceptable.
Genericide is an unfortunate event where an absolutely fanciful and invented word goes on to remain in the public memory for so long that it becomes attached to the good itself. Due to excessive marketing, even an arbitrary name as a noun in relation to a product can become generic and enter the public domain.
An example of such a case would be Xerox. Xerox was an invented word for the service of photocopying. However, today the word “photocopying” has been substituted with the word “Xerox” itself. Therefore, it creates confusion if Xerox is a company itself or the function of the art of photocopying.
Distinctiveness of trademark in Indian perspective with judicial decisions
In India, distinctiveness is required to exclude marks that do not even perform the basic function of distinguishing between two goods or products.
In the case of Hindustan Development Corporation v. The Deputy Registrar Of Trade Marks (1955), the Calcutta High Court held that the word ‘Rasoi’ for a hydrogenated groundnut oil had direct reference to the character or quality of goods. The word ‘Rasoi’ means kitchen in common Hindi parlance. So it is a descriptive mark and not a distinctive one in the case of a cooking oil product, to the people in the trade and also to the ordinary consumer.
Therefore, the Court held the mark to be descriptive and not distinctive enough to be registered as a trademark.
In another case of J.L. Mehta And Anr. v. Registrar Of Trade Marks (1962), the trademark “SULEKHA” is a Hindi word meaning “good handwriting”. But since the word is used for fountain pens, inks, nibs, etc., it serves as a distinctive trademark.
The Calcutta High Court has held that in order to be distinctive, a trademark should have at least some qualities which differentiate it from its competitors in the matter of Imperial Tobacco Co. Of India Ltd. v. Registrar of Trade Marks And Anr. (1977). The judgement is still reiterated several times to define distinctiveness as “some quality in the trademark” which earmarks the goods so marked as distinct from the other products or such goods.
Distinctiveness may either be ‘inherent’ or ‘acquired’. The notion of distinctiveness is essentially to segregate between two competitors, goods and services. Inherent distinctiveness means that any trademark has enough distinguishable features that differentiate it from other goods and products available in the market.
Acquired distinctiveness is also known as “secondary meaning” in the United States. It may be assessed based on several factors which include the perceptions of the consumers, the exclusivity of use, the manner and discretion of use, the volume of the goods marketed, advertisements, consumer surveys etc. Essentially, marketing and strategies ultimately decide the preferences of the consumers which in turn, goes on to be called as acquired distinctiveness.
In the case of Godfrey Phillips India Ltd. v. Girnar Food & Beverages Pvt. Ltd. (1998), the Supreme Court of India has held that a descriptive trademark is only entitled to protection if it has acquired secondary meaning which serves as distinctiveness.
In another case of Metropolitan Trading Company v. Shri Mohanlal Agarwal (2008), the Intellectual Property Appellate Board (Chennai) held that if a trademark has been in use for many years, it can claim acquired distinctiveness. Here, the trademark “ZODIAC”, though being a dictionary word, has been in use for more than three decades and has acquired distinctiveness.
Acquired distinctiveness can be achieved in a limited time and there is no particular time bar. If a product is new and fascinates the customers, it can become a hit overnight. The Delhi High Court observed the following in the case of Mrs. Ishi Khosla v. Anil Aggarwal And Anr. (2007).
Composition of a good trademark
A good trademark should be virtually attractive and must adhere to the uniqueness and should have the potential to reflect the quality of the product. Most importantly, the trademark should be crafted in such a manner that it can be differentiated from its counterparts of the same category and should be able to be protected and registered.
A good trademark is such that the public can easily spell and pronounce. Not only that, it should be easily remembered as well. A lengthy or complicated trademark will be forgotten easily and is not considered to be a good trademark.
The best trademarks are invented or coined words or unique geometrical designs.
No one can have monopoly rights on the selection of a geographical name, common personal name or surname. Using laudatory words or words that describe the quality of the goods (such as good, super, better, etc.) is not suggested either.
To ascertain a good trademark, it is advisable to conduct a trademark search to ascertain if the same or similar mark is in use in the market.
Graphical representation is another important aspect of registering a trademark. It helps to inform the consumers with precision and accuracy that a trademark is actually protected.
An ideal trademark according to Indian trademark law would be one that is distinctive, non-descriptive and non-generic. For example, ‘Yahoo’ is an invented word and has no specific dictionary meaning. But when attached to a product and service such as a search engine, it emanates a new function of distinguishing that search engine from its proprietor.
Need for registering a trademark
Trademarks play an important role in the promotion of goods and products. It also provides the exclusive right to market any goods to any particular individual or organisation. Some of the benefits of registering the trademark are as follows:
Firstly, the registration of a trademark protects any particular brand all across the country. Trademarks help to secure the brand name of any organisation. It also prevents other businesses from trespassing on the intellectual assets of a particular company. However, trademarks are granted on a territorial basis and are not valid all across the world if they are not registered internationally.
Secondly, registering a trademark increases the brand value. Registration of a trademark makes it easier to sell franchises or licence out a brand to any other party if it is registered as a trademark.
Thirdly, in the case of any dispute relating to an unregistered trademark, the onus of burden of proof will be on the party who owns the trademark. However, the same is not applicable in the case of a registered trademark. Then it will be on the other side to prove the following. Hence, if a trademark is registered, it is easier to win any trademark related dispute.
Apart from that, a registered trademark offers protection against infringement.
Fourthly, registration of a trademark provides automatic protection against others registering identical or similar trademarks. The trademark office will not register any other trademarks that are confusingly or “deceptively” similar to the mark already applied for or registered. Hence, through the registration of a trademark, one can prevent a competitor from registering a similar trademark. Trademark registration also protects against frauds and counterfeit goods.
The registered trademark will appear in the trademark register, which others usually search when choosing their own brand.
In the case of an internet based startup, a trademark offers protection for the domain name.
Application for registration of international trademark
The Madrid Protocol, also known as Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks or the Madrid system governs the international registration of any trademark.
Basic requirements for filing any international trademark
The basic requirements for filing any international trademarks are as follows:
- The applicant should be a respected national citizen of any country and should have a business within that country.
- The applicant should have a national registered trademark. The national trademark is used as the basis of an international trademark application. The application for an international trademark will have the same trademark as registered in the national trademark office.
- Lastly, the applicant for an international trademark must choose one or more members in the countries that are signatories to the Madrid Protocol where the applicant wants to protect their trademark.
Steps for registration of international trademarks
An international trademark protects a brand for a period of 10 years. After the 10-year period, the registration of the international trademark can be renewed. The procedure for registering an international trademark involves the following steps:
Step 1: Application through the National Trademark Office
The first step involves the submission of the application to the national trademark office of the respective countries. The office is known as the “office of origin.” For example, if a business is based in India, the Office of Registrar of Trademarks, India will be the office of origin.
In the national office, the form MM2(E) should be filled up. Thereafter, the national office should conduct an examination to see whether the trademark fulfils all the conditions of a valid trademark. If they are satisfied, the application will be forwarded to WIPO for further examination.
Step 2: Examination of the forwarded trademark application by the WIPO
After receiving the forwarded trademark application, WIPO will further examine the application to make sure that there are no defects in the application. If the trademark application meets all the criteria, it will be published in the WIPO Gazette of International Marks. Next, the trademark application will be forwarded to all the national offices of the requested countries under the Madrid Protocol where the applicant wants to register the trademark.
Step 3: Examination of the trademark application by the concerned national trademark office of the requested countries
After WIPO forwards the trademark application to the national trademark offices of each of the requested countries, they will separately conduct an examination. Apart from looking for the faults and defects in the application, the national trademark offices of the concerned countries will examine if the trademark creates any conflict with the other trademarks registered in their own countries. This includes the publication of the application in their own national gazette or bulletin and offers a specific time period for trademark holders to communicate regarding any similarity.
If any conflicts arise with the pre-registered trademarks, the national office should communicate a notification of provisional refusal within a year.
If there is no conflict, the application for the trademark will be approved in the requested countries and it will be protected.
Step 4: Monitoring of the trademark
After the registration of an international trademark, it should be monitored periodically to ensure no other competitors are copying the trademark. This is particularly important in the case of an international trademark.
Trademark monitoring services search for infringements of a particular trademark and alert brands when there is a possible threat of infringement. The trademark monitoring service can be offered by any individual, such as an IP advocate, any IP law firm or even a software that automatically searches for any infringement of a particular brand.
Step 5: Renewal of trademark
An international trademark is only protected for 10 years. After this time period is over, an application for the renewal of the trademark should be filed. The WIPO and most of the national trademark offices do not give automatic reminders, hence, it is up to the individual to manage it carefully. Failing this, the entire application procedure has to be followed once again from the beginning. So, it is very important to do periodic trademark status checks.
Fees for an international trademark
Under the Madrid system, the cost of an international trademark registration includes the basic fee (colormark costs more fees than other trademarks), additional costs depending on where the location the individual requested to protect the mark, and how many classes of goods and services to be covered by the registration.
After getting an international trademark registration, additional fees may be applicable in order to expand the geographical scope of coverage, modify or renew the trademark.
International treaties and agreements on trademark
Following are the important international trademark-related treaties and agreements:
Paris Convention for the Protection of Industrial Property
The Paris Convention for the Protection of Industrial Property, also known as the Paris Convention adopted in 1883, was the first international agreement to ensure that intellectual property including patents, trademarks, and industrial designs, etc., is also protected in other countries. The Convention lays down a few regulations that all the signatory states must follow. However, the Paris Convention did not provide any conditions for the filing and registration of trademarks, and these are to be decided by the domestic laws of the state.
Under the Convention, no application for the registration of a mark may be refused or the registration invalidated on the ground that the filing, registration or renewal has not been effected in the country of origin. If the mark is registered in the country of origin, an application may be filed to protect it in its original form in the other contracting states.
Under the Convention, collective marks must be granted protection.
The Madrid system is an international agreement that provides a convenient and cost-effective solution for registering and managing trademarks internationally. The Madrid system is governed by the Madrid Agreement Concerning the International Registration of Marks and the Madrid Protocol relating to the Madrid Agreement concerning the international registration of marks.
Under the Madrid system, one can modify, renew, or expand the trademark portfolio internationally. The single centralised system provides the benefit of filing a single application and the protection of all the member countries.
One is eligible to use the Madrid system if he has business operations in any of the member countries.
The Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks
The Nice Agreement provides for the classification of goods and services for the purposes of registering trademarks and service marks. This is known as the Nice classification. Since 2013, a new version of each edition of Nice Classification has been published annually.
The trademark offices of contracting states should indicate the numbers of the classes of the Nice Classification to which the goods or services for which the trademark application has been filed belong in official documents and publications. India became a part of the Nice Agreement in 2019.
The Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks
The Vienna Agreement deals with marks containing figurative elements. It contains classification for figurative elements of marks, known as the Vienna Classification. Besides joining the Nice Agreement, India also joined the Vienna Agreement in 2019 though India has followed the Vienna Code of Classification for Trademarks since the Trademarks Act, 1999 came into force.
The countries that are party to the Vienna Agreement may use their national classification and apply the Vienna Classification as a secondary system.
It divides all figurative elements into various categories, divisions and sections. The sections are further divided into main and auxiliary sections. Auxiliary sections are applicable to figurative elements that are already covered by the main section but are useful for ease of grouping and searching.
Vienna Classification follows a special coding system under which Every category, division and section has been designated a particular number.
Every figurative element under this classification is referred to by three numbers:
- The first denotes the category and may contain any number from 1 to 29;
- The second denotes the division and may have any number from 1 to 19;
- The third denotes the section and may contain any number from 1 to 30.
Trademark Law Treaty (TLT)
The Trademark Law Treaty deals with the processes regarding national and regional trademark registration. The procedure can be divided mainly into three phases. They are: i) application for registration, ii) changes after registration, and iii) renewal of the trademark.
Under the Trademark Law Treaty, no attestation, notarization, authentication, legalisation or certification of any signature is required for the registration of a trademark, except in the case of the surrendering the registration of a trademark.
The Singapore Treaty
The Singapore Treaty provides a wider scope and a modern and dynamic international framework for the harmonisation of administrative procedures of trademark registration. It is based on the Trademark Law Treaty of the WIPO and the first international instrument to deal with non-traditional trademarks. The Treaty provides the contracting parties with the freedom to choose the form and means of transmission of communications. It also provides relief measures when an applicant has missed a time limit for a procedure. The Treaty also includes provisions on the recording of trademark licences, recordal, amendment or cancellation of the recordal of a licence.
The Nairobi Treaty on the Protection of the Olympic Symbol
The Nairobi Treaty protects the Olympic symbol from being used in any kind of advertisement or as a trademark for goods, products or services without the authorisation of the International Olympic Committee.
Under this Treaty, if the Committee grants authorisation to use the Olympic symbol, the National Olympic Committee of that state is entitled to earn revenue by granting the authorisation.
Laws governing trademarks across the world
At their core, trademark laws function as consumer protection measures . It prevents consumer confusion and makes it easier for consumers to select and purchase the goods and services they want.
The rules for registering a trademark are governed by the laws of the country where the trademark registration application is made. The rules differ from country to country. Thus, individuals or companies must submit application forms to the central office of the country following the established procedures in which they intend to operate their businesses.
Despite occasional differences, many countries offer vastly similar processes and protections largely modelled on international treaties and agreements on trademarks. Furthermore, as in the USA, Germany, France, China and Japan, the first-to-file principle, i.e., whoever files the trademark application first acquires the ownership rights is applicable.
The United States of America
The United States of America (USA) is one of the busiest territories for trademark registrations in the world. US Trademark law stipulates that in order for a mark to be registered, it must first be used in commerce. Once the mark is registered, the owner of the trademark is under an obligation to maintain use of the trademark to avoid revocation. Therefore, ownership does not rest merely on registration but on the actual use of the brand. The United States Patent and Trademark Office, inter alia, supervises all the matters relating to trademarks.
Under Italian trademark law, an unregistered trademark is also protected, though the extent of this protection is limited compared to a registered trademark. Pursuant to the Italian Code of Industrial Property, the registration of any particular trademark does not nullify the rights of those who have continued to use that trademark. Under specific conditions, if an individual is able to prove that they have previously used a trademark that another is seeking to register, the individual will have the right to continue to use it provided that this is within the geographical and general limits of its previous use. The office handling all the activities regarding trademarks is Ufficio italiano brevetti e marchi, the Italian Patent and Trademark Office.
Chinese legislation on trademarks, known as “Trademark Law of the People’s Republic of China” only grants protection for trademarks when they are actually registered. The previous use of any trademark does not confer any rights of priority. In China, it is essential to register a trademark in advance to ensure the protection of the trademark. It is advisable that businesses wishing to register a trademark in China allow plenty of time for protection to arise before entering the market.
In addition to these, Chinese law also requires a translation if the mark is in a foreign language. Hence, it is also advisable to register a corresponding version using Chinese characters to avoid the risks of counterfeit and infringement. In China, a separate application is also required for each class of goods or services.
Under Brazilian trademark law, the registration of a trademark is done under the class of goods or services to be completed on a new application form. Brazil also adheres to the first-to-file principle. Further requirements of trademark registration in Brazil are that the mark must be capable of being visually perceptible. Unconventional trademarks such as sounds or smells are incapable of registration in Brazil. The law further stipulates that if a mark has not been put to bonafide use within five years of registration, the mark may be subject to revocation.
United Kingdom (UK)
European Union (EU)
European Union trade mark law allows a trademark to be registered in all the 27 member states of the EU with one single application form and a single set of fees. The European Union Intellectual Property Office (EUIPO) receives applications from all over the globe, and the registration allows the trademark holders to exercise their exclusive rights in all the member states.
The advantages of pursuing an EU registration with regards to time, money, and expenditure are wider.
Trade marks under Indian Law
As mentioned earlier, the Trade Marks Act, 1999 governs matters related to trademarks in India. Registration of a trademark is not necessary in India because the life of a trademark essentially depends on its actual use. Section 47 of the Trade Marks Act, 1999 provides that a trademark may be removed from the Registry on the ground of non-use. However, registration of a trademark always offers greater legal protection. The initial registration of a trademark shall be for a period of ten years but may be renewed for an unlimited time by the payment of renewal fees, as provided under Section 25.
Registration of trademarks
Under Section 3, the Central Government by publishing a notification in the official gazette should appoint a person to be known as the Controller-General of Patents, Designs and Trademarks, who will serve as the Registrar of Trademarks. The Registrar may withdraw or transfer cases if required, as provided in Section 4.
Section 6(1) of the Trade Marks Act, 1999 requires a record containing the detailed description of trademarks to be kept at the head office of the trademark registry.
Procedure of registration of a trademark in India
Step 1: Application for registration
The person who is the proprietor of the trademark should apply for the registration of the trademark with proper fees in the office of the trademark registry under whose territorial limit or jurisdiction the main place of business will be. A single application may be made for the registration of a trademark for different classes of goods and services. Hence, the fee payable for registration shall be decided in respect of each such class of goods or services accordingly.
The Registrar may refuse, accept it absolutely or may ask to amend the application.
Section 19 provides the party the capacity to withdraw the application after acceptance of the application by the Registrar, provided that the Registrar is satisfied with the reasons for the withdrawal of the acceptance.
Step 2: Advertisement of application
Section 20 provides that after an application for a trademark has been accepted by the Registrar and there are no discrepancies or amendments in the application, it should be advertised in the official Gazette. The section further provides that if an application has been advertised before acceptance, the error in the application should be amended after it.
The purpose of the advertisement is to provide an opportunity for interested persons to file an opposition if it affects their trade interests.
Step 3: Opposition to registration
Under Section 21 of the Act, any person has to file an opposition by filing a notice in writing to the Registrar with payment of the prescribed fees within four months from the date of the advertisement or re-advertisement of an application for registration. Thereafter, the Registrar shall serve a copy of the notice to the applicant, and the applicant should send a counter-statement within two months. The Registrar should serve a copy of the counter-statement to the person who filed an opposition.
The Section further provides that the Registrar should give the parties the opportunity to be heard if required, and thereafter will decide whether to provide registration or not.
If the person filing the opposition or the applicant sending a counter-statement does not reside or run business operations in India, the Registrar should give security for the cost of proceedings and treat the opposition or application as abandoned.
Step 4: Correction and amendment of the application
Section 22 of the Act provides thatbefore or after acceptance of an application for registration, the Registrar should permit the correction of any error in the application or permit the amendment of the application.
However, if the amendment is to be made in connection with the single application under Section 18(2), involving the division of such application into two or more than two applications, the date of making of the initial application should be held as the date of making of the divided applications.
Step 5: Registration of the application
After completing all the formalities, the registration of the trademark application is the last and final step. Under Section 23, when an application for registration of a trademark has been accepted and no notice of opposition was filed or the time for filing notice of opposition has expired or the opposition was decided in favour of applicant, the Registrar shall register the said trade mark within eighteen months of the filing of the application if the Central Government makes no objection.
After registration, a certificate should be issued to the applicant with the seal of the Trade Marks Registry.
If the registration of the trademark is not completed within twelve months of the date of the application due to the fault of the applicant, the Registrar after serving notice may treat the application as abandoned if it is not completed within the time specified in the notice.
Under Section 24, the Act also permits the registration of a jointly owned trademark.
Duration and renewal of registration
The registration of a trade mark provides protection for a period of ten years, but the registration may be renewed from time to time by filing a renewal application with payment of prescribed fees for a period of ten years from the date of expiration of the original registration or of the last renewal of the registration.
Grounds for refusal of registration of trademark in India
The grounds for refusal of registration of a trademark in India are of two types as defined under the law. They are absolute grounds for refusal of registration as described under Section 9 and relative grounds for refusal of registration under Section 11.
Absolute grounds for refusal of registration
Section 9 of the Trademarks Act, 1999 lists out certain absolute grounds for refusal of registration of trademarks. Essentially, it relates to the intrinsic qualities of a trademark which indicate the functions a trademark is supposed to satisfy. These include the indication of purity, quality, and distinguishing the goods from other competitors.
Under Section 9(1), the Act provides that a trademark should not be devoid of distinctiveness in the first place.
Secondly, registration will not be granted to the marks which may be used in trade to designate the characteristics, quality or quantity of the goods or the service. In other words, the mark should not be descriptive. These also include the geographical location or the time of production.
Finally, the marks which consist exclusively of marks or indications which have either become customary in the current language or in the established practices of the trade cannot be used. This is related to descriptive and generic marks.
In other words, the trademarks which are eligible for registration should be distinctive, non-generic and non-descriptive.
- A geographical name is prohibited from being registered as a trademark.
- Surnames, personal names, any common abbreviation thereof or the names of a sect, caste or tribe in India are prima facie not registrable as they are common and inherently non-distinctive. However, it may be registered upon proof of distinctiveness. For example, Cadbury is a good example of a surname enjoying registrability for confectionary products upon evidence of distinctiveness.
- Others : Letters, numerals (555 detergent), slogans, portraits of traders (Founder of MDH Masala) etc. may be registered upon proof of distinctiveness.
- Portraits of national leaders or historical monuments cannot be registered as trademarks.
Section 9(2) of the Act further provides that the absolute grounds for refusal of a trademark will be :
- If the marks deceives or causes confusion in the public mind;
- If the mark hurts religious sentiments of any class or section of citizens of India;
- If the marks contains any scandalous or obscene matter;
- Finally, marks which are protected under the Emblems and Names (Prevention of Improper Use) Act, 1950 ought not to be used as a trademark at all.
Shape as a Trade Mark in India
Section 9(3) of the Trade Mark Act, 1999 provides that shape should not be registered as a trademark if it consists exclusively of the shape of goods:
- resulting from the nature of the goods themselves; or
- which is necessary to obtain a technical result; or
- which gives substantial value to the goods.
Relative grounds for refusal of registration
The relative grounds for refusal of trademarks under Section 11 of the Trade Mark Act, 1999 are as follows:
A mark shall not be registered if there is a “likelihood of confusion” and a “likelihood of association” by virtue of its:
- Identity with the earlier trademark;
- Similarity to an earlier trademark or similarity of goods and services caused by the earlier trademark;
A trademark should not be registered in India if it is identical or similar to an unregistered trade mark protected by the law of passing off (discussed later) or copyright.
Before rejecting any trademark on the basis of relative grounds, the following essential grounds should be examined:
- Similarity to an earlier trademark, whether registered or unregistered;
- Interest of the opponent who has filed a notice of opposition under Section 21;
- Whether an earlier trademark is still in use or not. This is particularly important since the protection of the trademark depends upon its use.
- Likelihood of consumer confusion;
In the famous case of F. Hoffmann-La Roche & Co. Ltd v. Geoffrey Manners & Co. Pvt. Ltd (1970), the vitamin “PROTOVIT” was registered for one of the vitamin preparations manufactured by the appellant company while the respondent company applied for registration of its mark “DROPOVIT” and was granted the registration. Later, the appellant came to know about the trademark and requested the respondent to alter it. On refusal from the respondent, the appellant moved to the court for rectification and removal of marks. The Supreme Court of India held that the word “DROPOVIT” is entitled to be registered as a trademark since it is an invented word and not a descriptive word.
Well known marks
Trademark laws protect consumers from being confused by deceptively similar or identical trademarks. This is known as the sole identification function of a trademark. Apart from that, trademarks also perform the function of protecting the proprietor through well-known marks. A well-known mark means a mark in relation to any goods, products or services known to a large section of the public.
Determination and protection of well known marks
The Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks by the WIPO lays down the provisions on how to determine and protect a well-known mark under Article 2 and Article 3 respectively.
Whether a mark is well-known or not is determined based on the following factors:
- The amount of knowledge or recognition of the mark by the public in the relevant sector;
- The time duration of how many years the mark has been in use as well as the geographical area;
- If the mark is applicable in promotions including publicity and advertisements;
- record of successful enforcement of rights in the mark, in particularly whether the mark is well known to the competent authorities;
- The value associated with the brand;
Under Article 3, it is stated that the member state has the responsibility to protect a well-known mark against “conflicting marks, business identifiers and domain names” and that it shall be applicable from the time the mark has become well-known in the state.
A well-known trademark is protected under Indian trademark law and has been defined in Section 2(1)(zg). Under Section 9(1)(c), a well known trademark should not also be refused registration.
A trademark licence refers to the limited consent or grant of rights provided to the licensee to exercise. Without the grant of the trademark licence, the exercise of the rights would otherwise be illegal.
A trademark licence is an authorisation provided by the trademark owner permitting the licensee to act and exercise certain rights specifically allowed by the trademark owner. Licences may or may not be exclusive. Similar trademark licences may also be granted to multiple individuals parties if the trademark owner wishes to do so. A party is also allowed to amend or cancel their own licence.
The Joint Recommendation Concerning Trademark Licences by the WIPO provides certain guidelines on how a trademark licence should be granted if a party applies for the licence of a trademark.
For an international trademark, the Form MM13 (E) should be filled up to record a trademark licence. Similarly, Form MM14 (E) and MM15 (E) are for amending and cancelling a trademark licence respectively.
Protection of trademarks over the Internet
The Joint Recommendation Concerning Provisions on the Protection of Marks, and Other Industrial Property Rights in Signs, on the Internet governs the protection of trademark over the internet.
Under this Recommendation, the use of any sign on the internet will only be considered under the provisions if it is used for commercial purposes.
A domain name, also known as a domain, is the friendly version of the physical IP address on the Internet. It is a unique name which appears after the @ sign in email addresses or after www. in web addresses. The use of signs over the internet mostly consists of domain names. The domain name system (DNS) is the automatic process that converts the domain name to its corresponding IP address.
Registration and dispute resolution of domain names
Domain names are usually registered by the Internet Corporation for Assigned Names and Numbers (ICANN) on a first-come-first-serve basis. Domain names are registered universally but offer territorial protection.
Disputes related to domain names can be resolved through traditional litigation or private arbitration under the Uniform Domain Name Dispute Resolution Policy (UDRP).
In the English case of Marks & Spencer Plc v. One in a Million Ltd (1997), the defendant dealt in domain names, specialising in registering well-known names and trademarks and offering those names for sale. The plaintiffs, Marks & Spencer, objected to the defendants’ registration of “marksandspencer.com” and “marksandspencer.co.uk”.
It was held that there was enough evidence for the plaintiff to show that the defendant intended to infringe the plaintiff’s rights in the future. The Court further ruled that threats to infringe had been established by the mere fact that the defendant registered the domain name without having any intention of doing business.
In the first Indian case on domain dispute of Satyam Infoway Ltd v. Siffynet Solutions Pvt. Ltd (2004), where two businesses namely Satyam Infoway Ltd and Siffynet Solutions Pvt. Ltd, employed variations on the same mark in their respective domain names. The Supreme Court of India held that domain names are business identifiers and serve the same function as trademarks. It serves to communicate, identify, and distinguish the business itself. The Court ruled that the respondent was seeking to use the appellant’s reputation as a provider of service on the internet and that the appellant was entitled to relief.
The term ‘cybersquatting’ refers to an individual or a company who intentionally purchases a domain and holds it until they can sell it at a premium price. It is also referred to as “domain squatting” or “typosquatting.” The cyber squatter could offer the domain to the person or company that owns the trademark at an inflated price.
The first case of cybersquatting in India is the case of Yahoo!, Inc. v. Akash Arora & Anr. (1999). In the mentioned case, the plaintiff was the owner of the trademark ‘Yahoo!’ and the domain name ‘Yahoo.Com’ and the defendant adopted the name ‘Yahooindia’ for similar internet services.
The issues raised in the case were whether a domain name is protected under trademark laws and whether the action of the defendant amounts to infringement.
The court granted an ad interim injunction in favour of the plaintiffs and restrained the defendants and their partners from operating any commercial purpose or dealing in services or goods on the internet or under the trademark or domain name ‘Yahooindia.com’ or any other trademark/domain name which is deceptively similar to the plaintiff’s trademark.
Trademark infringement and passing off
Trademark infringement is the unauthorised use of a protected trademark or a deceptively similar trademark to represent a business, brand, goods or services belonging to another party. The use of the concerned trademark must create enough confusion for consumers regarding the origin of the product.
There are eight elements used to determine infringement of a trademark. This is known as the 8-factor trademark infringement test used by the courts to determine whether any trademark infringement has been committed. The 8-factor trademark infringement test was laid down by the US Court of Appeals for the Sixth Circuit in the case of AWGI, LLC v. Atlas Trucking Co., LLC (2021). The factors are as follows:
- the strength of the mark owned by the plaintiff;
- The relatedness of the goods or services with each other;
- similarity between the marks;
- evidence of actual confusion;
- procedures and channels of marketing used;
- likely degree of purchaser care;
- intention of the defendant in selecting the mark; and
- probability of expansion of the product lines or services.
Trademark infringement can be direct or indirect. Direct trademark infringement takes place when the trademark used is similar or deceptively similar to each other, used without the permission of the owner of the trademark or unauthorised use of the trademark. Whereas, indirect trademark infringement takes place in two ways. Firstly, in the case of vicarious infringement, a person could have controlled the direct infringement but chose not to do it. Secondly, when a person directly contributes to the infringement of the trademark or influences the principal infringer.
An advertisement can also cause trademark infringement. In the recent Indian case of Reckitt Benckiser India Private Limited v. Hindustan Unilever Limited (2021), the defendant, to illegally promote the sale of the toilet cleaning product ‘DOMEX’ , compared it in several advertisements with the HARPIC branded toilet cleaner of the plaintiff and termed it as an ‘ordinary toilet cleaner’. The appellant approached the court on the grounds of infringement and disparaging reputation and goodwill. The court decided in favour of the plaintiff and ordered an injunction by restraining the defendant from publishing the advertisement in any forum before removing all references of the product of the plaintiff ‘HARPIC’.
Section 29 of the Trade Marks Act, 1999 deals with provisions of trademark infringement in India.
Passing off is a common law tort used to enforce rights in unregistered trademarks. The doctrine of passing off is used in common law countries such as the United Kingdom, Philippines, New Zealand, India etc. It protects an unregistered trademark from being misrepresented. It also helps in protecting the goodwill and reputation of a business from dishonest infringement.
In an action of passing off, the plaintiff must show that there is misrepresentation by the defendant to injure his business or goodwill and that the plaintiff has suffered enough damage to his business and goodwill.
Remedies for infringement of trademarks
In the event of any trademark infringement, the aggrieved party may approach the court for remedies. Remedies available for infringement of trademarks are usually of three types.
Civil remedies for infringement of trademark usually include the following.
- The plaintiffs may request the court to issue an order of injunction that directs the infringer to cease all activities, including the use of the infringing trademark. Injunctions can be permanent, banning the infringing party from using the trademark forever; temporary, which means the injunction is valid for a certain period or interim injunction meaning for the specific duration while the trademark infringement lawsuit is going on.
- The Court may also order for payment of damages caused due to the infringing of the trademark. The cost of damages may also cover the cost of a lawsuit paid to the plaintiff.
The court may also decide on criminal remedies for the infringement of trademarks. Criminal remedies include imprisonment, fine or both, depending on the gravity of the infringement.
Along with civil and criminal remedies, there are also administrative remedies. The parties, if they think their trademark is being infringed, may file for an opposition soon after the publication of the other party’s application took place in the official gazette.
The administrative remedies also include the deletion or correction of an infringed trademark from the register.
The court may order seizure, forfeiture or destruction of the infringing goods.
Trademark dilution is the case where the owner of a well-known trademark has the capacity to prevent others from using their mark or marks that are deceptively similar to them. Trademark dilution is constituted on the ground that it kills the uniqueness of their brand or affects their reputation. In other words, no one has the right to copy a well-known trademark or to misuse the well-known trademark’s reputation.
In addition to filing for infringement of a trademark, owners of trademarks can also take action for trademark dilution. However, trademark dilution can only be instituted if the trademark falls under the category of a well-known mark.
Trademark tarnishment is also a special case under the doctrine of trademark dilution. It occurs when a mark is associated with inferior goods, products or services. In the US case of Toys “R” Us v. Akkaoui (1996), the plaintiffs brought an injunction against the defendant doing business in sexual devices and clothing as Adults “R” Us, for both trademark dilution and infringement. The District Judge ordered the defendants to cancel the registration of the domain name “adultsrus.com”. It was further held that the actions of the defendant amounted to trademark dilution and trademark tarnishment.
A trademark exclusively identifies a product as belonging to a specific company and confirms the ownership of the brand. It helps in legally differentiating a particular product from all others of its kind. Hence, the importance of the trademark is immense for commercial purposes. Though the trademark laws of every country vary from one another, at their core, they perform the same function of distinguishing the mark and protecting it from others offering similar goods and services. The international treaties and agreements also provide an international framework and legal system to safeguard the rights of trademark owners.