TRADEMARK – EXTENSIVE ANALYSIS OF ITS NATURE, SALIENT PRINCIPLES AND INFRINGEMENT

INTRODUCTION

Intellectual Property Rights (IPR) are a section of those legal rights granted to an author, inventor in order to protect his innovation for a particular said tenure. Trademarks, Patent, Copyright and Design comprise the subject matter of Intellectual Property Rights.

In this article we will be dealing with Trademarks, one of the most crucial subjects of Intellectual Property.


WHAT DO YOU MEAN BY TRADEMARK?

In order to tell the consumer that a product is made by a specific person or organization with a clear source of origin and to distinguish that product from any other person's or organization's product of a similar type and function, the concept of ‘trademark’ comes into picture. It is a visual symbol in the form of a word, a colour, or a label that is applied to products for sale. By designating such a symbol, the author or organization is granted a temporary exclusive license which is used in connection with that product.

Such a right to use symbols for product licensing is known as a trademark, and it may be registered under the profound Trade Marks Act 1999 and governed under the Trade Marks Rules, 2002.

The definition of Trademark can be established as underlined in the Section 2(1)(m) of the Act as follows: Trademark must be a mark which includes a device, a brand heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.

Thus, it can be clearly understood that a trademark is a device, which establishes an identity to a particular product or service. It’s also considered as a valuable commercial asset as well as a marketing tool that might, in some cases, contribute to funding a company.


DIFFERENT TYPES OF TRADEMARKS

There are 4 basic types of Trademarks:

● Service Mark

● Collective Mark

● Certification Mark

● Trade Dress


A. Service Mark

Any term, name, symbol, device, or combination thereof used or intended to be used in commerce to identify and differentiate the services of one provider from those of other providers, as well as to designate the source of services, is referred to as a service Mark. In essence, it helps to set one service provider apart from another. Service marks only apply to the delivery of services; they do not cover tangible objects.

As trademarks are intended to protect things, service marks are used to identify a service.

Examples – Sponsorship, Hotel and Theatre services, Advertising services, McDonalds, Google etc.


B. Collective Mark

This mark is owned by an organization or a group of people who collectively own a product.

Examples – Amul, Britannia, Chartered Accountants (CA)


C. Certification Mark

A certification mark may also be referred to as a conformance mark, assurance mark, or symbol of validity. These markers enable some details that a customer might not be clear about. These factors might include the effect on the environment, the caliber of the product, safety and hygienic practices, production standards, the lack of preservatives, etc. An immediately recognizable method for evaluating quality from a reputable source is provided to the consumer by a certification mark. Additionally, it assures customers that the product has undergone satisfactory testing, which led to the awarding of this mark.

Examples – ISI Mark, Hallmark and Ecomark.


D. Trade Dress

This refers to a group of components that together create appearance, texture, ambiance of a good product or service. This is an ineffective physical component.

Examples of components are – Colour, Size, Shape, Packaging, Design, Texture etc.


IMPORTANT PRINCIPLES OF TRADE MARK

The 5 basic fundamental principles enshrined in the Trade Mark Act, 1999 are as follows:


● Section 9 (Absolute grounds for refusal of registration) - The class of words or symbols over which such monopoly right may be given must be limited since registration grants the proprietor a sort of monopoly right over the use of the mark, which may consist of a word or symbol that is lawfully needed by other merchants for legitimate trading or commercial objectives.


● Section 13 and 35 - Trademark registration should not allow registration of names or words that are used ordinarily in the course of commerce by other people.

● Section 34 – Prior users of trademark should be protected against monopoly rights under the statute.

● Section 9 and 11 - There are two fundamental interests that a trade mark should protect. The public's interest came first. If the public would be led astray by the use of a trade mark in determining the source of the items they are buying, then it should not be registered. Then there is the interest of the other merchants who have the right to object if the applicant's goods are misrepresented to the public as the goods of such other traders via the use of the trade mark that is being considered for registration.

● Objection to any trademark registration should be permitted.


What is Trademark Infringement and Different Remedies?

The infringement of a trademark is outlined in Section 29 of the Trade Marks Act of 1999. In essence, it is claimed that a trademark has been violated when the owner of a registered trademark has their exclusive rights violated. The applicant receives exclusive rights to the brand name upon trademark registration.

The trademark registration certificate grants the owner the sole right to use the brand name for any commercial activity falling under the registered class. If a third party uses the brand name in the course of business without the possessor's consent, it is a violation of the owner's rights and is referred to as trademark infringement.

Now as we speak of remedies, in India it's classified under two sections – Civil and Criminal Remedies.


A. Civil Remedies

Injunction – It is defined as a legal order that prohibits one person from engaging in a specific activity or conduct. In terms of trademark infringement, it means prohibiting someone from using the trademark without authorization. The Court permits protection for the trademark owner through a temporary or permanent stay.

Damages – This refers to the recoupment of losses incurred by the trademark owner as a result of the infringement. Under this remedy, the monetary worth of any financial loss or brand harm is recovered. The amount of damages would be determined by the court after taking into account the owner's actual and anticipated losses as a result of the infringement (Unliquidated Damages).


Custody of Infringing Materials - This type of remedy proposes that the Court might ask the violator to deliver all the products or products that are categorized with the brand name. In such cases, the Court might direct the authorities to withhold the associated materials accounts and destroy all such products.


B. Criminal Remedies

● Section 103 - Any individual or company that violates another party's trademark rights is subject to criminal prosecution and a minimum sentence of six months in jail that may be increased to three years.

● Section 104 – This section specifies the amount of fine that must be paid as compensation for violation of rights. The clause establishes a penalty of Rs. 50000 which may be enhanced to a maximum of Rs. 2,00,000.


CONCLUSION

We may expect more competition given the present uptick in start-ups, and a strong trademark protection system can only help to keep that competition lively and real.

Hence it is essential for a brand to be safeguarded and preserved in a market like India. Making it subject to further development, if not out of requirement, then at least out of necessity.



This article is written by Adyaan S Khan of BMS College of Law.

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