‘To look different is not the solution; to stand distinguished is the aim.’
A trademark is just what one need to stand distinguished in the market. But the question is what a trademark is?
A trademark (popularly known as brand name) in layman’s language is a visual symbol which may be a word signature, name, device, label, numerals or combination of colours used by one undertaking on goods or services or other articles of commerce to distinguish it from other similar goods or services originating from a different undertaking. To be more precise it is defined under section 2(zb) of the Indian Trade Mark Act, 1999.
Legal Obligations; one must follow to register a mark under this act.
- The selected mark should be capable of being represented graphically (that is in the paper form).
- It should be capable of distinguishing the goods or services of one undertaking from those of others.
- It should be used or proposed to be used mark in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services and some person have the right to use the mark with or without identity of that person.
Renewal of registration
The trademark is initially registered for a period of 10 years, which is calculated from the date of filing of the application and in case of convention application, from the date of priority. The registration is required to be renewed within 6 months before the date of expiry of the registration, i.e., 10 years from the date of the application or subsequent renewals.
The failure in renewing the trademark within the stipulated period of time and a grace period of maximum 1 year granted for restoration of the trademark, automatically leads to removal of the trademark from the Register of Trademarks.
Rectification of Trademark
An aggrieved person may file an application before the Registrar of Trademarks or to the Intellectual Property Appellate Board (IPAB) for cancellation or varying the registration of the trademark on the ground of any contravention or failure to observe a condition entered on the Register in relation thereto.
The application for rectification can also be filed for removal of an entry made in Register, without sufficient cause or wrongly remaining on the Register and for correction of any error or defect in any entry in the Register.
Benefits of Trademark on your brand name or logo?
The Trademark once registered can be very useful. It uniquely functions to identify goods, services and its origin. It also guarantees unquestionable quality by advertising and creating an effective image of the goods/ services.
Trademarks benefit both businesses and consumers. Trademarks allow businesses to build an identity and reputation with customers, and thereby grow or expand their business. They allow consumers to take an informed buying decision by searching out familiar brand names and avoid bad buying experiences by avoiding the brands they didn’t like.
- Confers upon the owner the exclusive right to use the brand.
- Protects hard earned goodwill in the business.
- Protects your Name / Brand Name from being used in a same or similar fashion, by any other business firm, thus discourages others from cashing on your long built goodwill.
- Gives your products a status of ‘Branded Goods’.
- To obtain legal relief in respect of infringement (misuse by others) of the trade mark.
- Power to assign (transfer) the trade mark to others for consideration.
Benefits for E-Business:-
- You can protect your domain, if you have the trademark. Trademark protect your work mark as your brand name so its also protect the word mark in domain name.
- You claim if some one other person registers another domain like .pk TLD Domain from Pakistan so you can claim your Domain with the Wordmark.
- Once your trademark is registered then no one other person can be used that work mark for the Google Ad words without your permission.
Shield up the Trademark!
Trademark protection is legal function. In small enterprises one of the tasks of the legal department is to assure the protection of company’s trademarks. In large enterprises there is need to create a specific department known as ‘ Trademarks department’ which will look after the ‘ Trademarks Management
Since trademark protection is a legal function, the trade marks department best assure its role when it is integrated in the legal function of an organization.
The principal duty of the Trademarks Department is to protect and administer the trademark of the company i.e. by getting registration under the relevant laws of a particular country, the country of registration, the list and classes of goods and the services covered , renewals, action against the infringes and dishonest users and so on.
The trademarks department has an additional task in advising the marketing personnel in the choice of new trademarks, their protect ability and their availability, and also in the legal aspects of trademark policy.
The Trademarks Department may also be entrusted with the task to managing the licensing of trademarks, drafting license agreements and permitted user agreement for use of trademarks and also to look after other areas of Intellectual Property such as Patents, Designs, Copyrights and technical know-how.
Functions of the trade marks department for proper trademarks management.
1) Advise the marketing department with regard to the choice of a new trademark.
2) Legal clearance of a new trade mark by conducting searches in the Trademarks Registry and also in the market places with regard to the availability of identical or similar marks in respect of similar goods and services.
3) Submit trademark applications and advise the company to go for registration in a country where the goods are to be exported or sold.
4) Since there is globalization of industry and trade, it is better to seek International protection of the trademarks and other Intellectual Property.
5) Advise the company for proper use of trademarks after obtaining registration in order to avoid the attack on the registered trademarks on the ground of non-use by business competitors.
6) Initiate legal action against the infringes by filing civil suits or criminal complaint against the infringes and dishonest traders.
7) To conduct search and raid the premises when the infringed or spurious goods are being manufactured or marketed with the help of local police personnel after lodging criminal complaint.
8) To maintain individual files for each and every trademark of the company for easy reference.
9) It is better to computerize the Trademarks Department by creating a software for this kind of ‘ Trademarks Management ‘.
If the creation of trademark department is not economical one of trademark department is not economical one for any type of organization, then it is better to entrust this task to a Trademark Attorney who should be properly instructed to maintain all particulars and papers with regard to trademarks either on retainer or work-to-work basis.
Remedies against Infringement and/or Passing off
Under the Trade Marks Act, both civil and criminal remedies are simultaneously available against infringement and passing off. Infringement of trademark is violation of the exclusive rights granted to the registered proprietor of the trademark to use the same.
A trademark is said to be infringed by a person, who, not being a permitted user, uses an identical/ similar/ deceptively similar mark to the registered trademark without the authorization of the registered proprietor of the trademark. However, it is pertinent to note that the Indian trademark law protects the vested rights of a prior user against a registered proprietor which is based on common law principles.
Passing off is a common law tort used to enforce unregistered trademark rights. Passing off essentially occurs where the reputation in the trademark of party A is misappropriated by party B, such that party B misrepresents as being the owner of the trademark or having some affiliation/nexus with party A, thereby damaging the goodwill of party A. For an action of passing off, registration of a trademark is irrelevant.
Registration of a trademark is not a pre-requisite in order to sustain a civil or criminal action against violation of trademarks in India. In India, a combined civil action for infringement of trademark and passing off can be initiated.
Significantly, infringement of a trademark is a cognizable offence and criminal proceedings can be initiated against the infringers. Such enforcement mechanisms are expected to boost the protection of marks in India and reduce infringement and contravention of trademarks.
Relief granted by Courts in Suits for Infringement and Passing off
The relief which a court may usually grant in a suit for infringement or passing off includes permanent and interim injunction, damages or account of profits, delivery of the infringing goods for destruction and cost of the legal proceedings.
The order of interim injunction may be passed ex parte or after notice. The Interim reliefs in the suit may also include order for:
Appointment of a local commissioner, which is akin to an “Anton Pillar Order”, for search, seizure and preservation of infringing goods, account books and preparation of inventory, etc.
Restraining the infringer from disposing of or dealing with the assets in a manner which may adversely affect plaintiff’s ability to recover damages, costs or other pecuniary remedies which may be finally awarded to the plaintiff.
Offences and Penalties
In case of a criminal action for infringement or passing off, the offence is punishable with imprisonment for a term which shall not be less than six months but which may extend to three years and fine which shall not be less than INR 50,000 but may extend to INR 200,000.
Indian law contains embargo on the assignments of trademark, whether registered or unregistered, whereby multiple exclusive rights would be created in more than one person which would result in deception/confusion. However, the assignment with limitations imposed, such as goods to be sold in different markets, i.e., within India or for exports are valid. The Registrar is authorized to issue a certificate of validity of the proposed assignment on a statement of case by the proprietor of a registered trademark who proposes to assign the mark. The said certificate as to validity is conclusive unless vitiated by fraud.