Intellectual property rights are the rights given to a person for the creation of his mind. IPRs are provided exclusively to the creator for a fixed span. Various IPRs are:
● Trademarks
● Patents
● Copyrights
● Geographical Indication etc.
The McDonalds arc or the Audi rings, a leaping panther of puma or a bitten apple of apple, we all encounter around 100 trademarks a day and these are well imbibed in our memory. Trademarks and logos help us identify goods and services of brands of our choice by differentiating them from the rest.
DEFINITION
A trademark is a symbol, word, design, logo, phrase or combination of those, that represents a business or its products. These symbols, words etc. are provided legal protection that prevents the same from being used by any other business or organization.
GOVERNING LAW IN INDIA
The Trademark Act of 1940 was the first act on the subject of trademarks. This came into effect by borrowing the British Trademark Act of 1938. In independent India, this act was replaced by The Trade and Merchandise Act of 1958. Currently, the Trademark Act 1999 and the Trademark Rules of 2017 primarily govern the trademark- related laws in India.
TYPES OF TRADEMARKS
There are many types of trademarks, meant basically for the same purpose. A total of 45 classes which are further bifurcated into Goods and Services have been prescribed by The Trademark Ministry under Trademark Act, 1999.
A trademark can be categorized into the following types:
1. Product mark
2. Service mark
3. Collective mark
4. Certification mark
5. Shape mark
6. Pattern mark
7. Sound mark
REGISTERING A TRADEMARK IN INDIA
Applying for a trademark is a simple procedure mentioned under The Trade Marks Act, 1999 and the Trade Marks Rule, 2015.
The process for the same is:
1. Search for a trademark
Searching for a trademark is much more than just having a good brand name in mind. After a candidate has looked for a name, she/ he is required to search trademark records to ensure there isn't a trademark similar to what one has thought of. Before registering a thorough check should be done for similar, confusing or resembling trademarks. This step helps avoid time-consuming trademark litigations.
2. File an application
Once the research is done, an application for the trademark can be made at the office of Trademark Registry India or online. A receipt is issued immediately for future reference. A trademark application includes - the mark to be registered, information about the trademark owner, a list of services or goods that the trademark needs to be registered for and the date since the trademark is in use.
3. Examination of trademark
Once the trademark application is filed, the registrar searches among the registered trademarks and pending trademark applications to ensure no similar marks exist. The examiner also checks for other discrepancies and if the mark is even registrable as per law.
Now the trademark is either accepted unconditionally or with certain conditions.
In case of conditional acceptance of the trademark by the registrar, the amendments, conditions or limitations are communicated to the applicant in writing and a fixed time is given to the applicant to fulfil the requirements or respond to the objections and rectify their stand.
4. Publication of trademark
If the trademark application is accepted, it gets advertised in the trademarks journal by the registrar in a prescribed format and third parties are given an opportunity to oppose or challenge the given trademark. The entry of a trademark specifies particulars such as date of registration, goods and services for which the trademark is sought etc.
In case of an opposition, a fair hearing is held and decisions are made by the registrar.
5. Certificate of registration
A registration certificate under the seal of the Trademark Office is issued once the application proceeds for trademark registration, following publication in Trademark Journal.
6. Renewal of trademark
A trademark when registered is valid for 10 years and can be renewed after every 10 years. Hence, a brand name or a logo can be protected in perpetuity.
REGISTERED VS UNREGISTERED TRADEMARKS
You become a trademark holder as soon as you start using one for your products or services. The rights of a trademark holder are established with the use of the trademark. But these rights, associated with an unregistered trademark are not absolute and carry certain restrictions. For example, these rights are applicable only to a certain geographical area.
To let a manufacturer's rivals or customers know that they claim their trademark as their own, symbols can be used. A 'TM' symbol can be used even if the trademark isn't registered yet. If a trademark is fully registered, an ‘R’ symbol can be used. Once registered, a trademark becomes an untouchable intellectual property of the holder.
RIGHTS OF AN UNREGISTERED TRADEMARK
A trademark can be protected even if it's unregistered. In case there's a deceptive use of your trademark or an identical trademark, such unauthorized use results in passing off.
In order to prove that an unregistered trademark has been infringed, it has to be established that:
• The trademark owner has or is likely to suffer a loss due to such unauthorized usage of his/her trademark
• Misrepresentation of the defendant’s act
• The owner has acquired goodwill in the market through his product or service
RIGHTS OF A REGISTERED TRADEMARK OWNER
1. Right to Assign
A trademark owner, under section 37 of the act, has the right to assign the trademark or to transfer ownership by either a license or ab assignment. The ability to grant effectual receipts rests with the owner.
2. Right to exclusive use
A right to exclusive use of the trademark concerning the goods and services for which it was registered, under some conditions, is granted to the owner. In case of multiple proprietors of the trademark, similar rights are granted to each of them against an unauthorized user.
3. Right to Register Correction
The right to apply for correction of the register with regards to the name, address, or description of the registered proprietor is incorporated with the registered man of affairs. A right to even cancel out an entry or strike out a certain class of goods or services from the register.
4. Right to Statutory Remedy for Any Infringement
Trade Marks Act 1999, provides legal remedies to the trademark owner in case of any sort of infringement of the trademark.
A passing off suit can be filed in case of an unregistered trademark. Passing off is a common law remedy, but the burden of proof rests with the litigant.
IMPORTANCE OF A TRADEMARK REGISTRATION
1. Valuable asset
A trademark is an asset that appreciates over time. Like property assets, trademarks too can be bought, licensed (like leasing or renting), sold, or used as a security interest to secure a loan to grow your business.
2. Provides uniqueness to brand
In order to differentiate your brand from the rest, there should be a logo or a brand name that's unique and identifiable. A trademark helps your brand stand out.
3. Easy for customers to find
A trademark that’s easily identifiable and famous, makes it easier for customers to spot your products, among the rest in the market. Consumers of your products or services can trace them easily and reach out.
4. A trademark is forever
A trademark, once registered, will go on the journey of your brand along with you as once registered, it is forever. However, it needs to be renewed every 10 years. The identity it gives to the brand will stick to it forever.
5. Protection of your brand
Lastly and most importantly, a trademark, when registered, establishes your ownership over the brand, name, or logo. It protects your brand from any unauthorized use or infringement by third-party players or competitions. A trademark symbolizes that the brand belongs to you completely.
DISADVANTAGES:
With the number of positives, a trademark comes with certain negatives too.
Some of them are:
1. Alteration of classes
Trademark classes, once registered, cannot be altered. This is the reason why choosing the correct trademark classes, relevant to your product and services is so crucial. This determines the range of protection your trademark gives you. However, a new trademark application can be filed in case one needs to add classes.
2. Repeated renewals
Another potential downside to a trademark is the requirement for repeated renewals. A fee for renewing every class needs to be paid every 10 years. This is difficult for brands providing a wide range of products and services, as they have a larger trademark portfolio. Failing to renew on time can result in the removal of your trademarks from the trademark register.
3. Limitations in protection
A trademark fails to provide an overall protection to your brand or your product and services. It just protects the marketing of your brand and you need to seek and invest in more forms of intellectual properties.
4. Difficulty with litigation
A difficulty with litigation holds true for any kind of legal matter and that implies a difficulty with trademark-related litigation. For instance, your trademark is infringed, or you consider it to be infringed. You send a cease and desist message to the infringer and that's unsuccessful. You now need to pursue legal action. A legal action is time consuming and expensive. Moreover, the decision whether your trademark has been infringed or not, is highly subjective.
CASE STUDY
1. STARBUCKS VS SARDAR BUKSH
Starbucks Corporation v. Sardar Buksh Coffee & Co. & Ors. is a recent and popular case of trademark infringement.
Starbucks, an American multinational chain of coffeehouses registered its logo in India in 2001.The Starbucks logo depicts a "crowned maiden with long hair". In 2015, a business called "Sardarbuksh Coffee & Co" commenced. The goods and services provided by the defendants were similar to that of the plaintiff and the logo was deceptive too with colours reversed and a similar pattern to that of the plaintiff.
A case was filed at the Delhi High Court in August 2018 and the defendants were asked to change their name from "Sardarbuksh Coffee & Co." to "Sardarji-Bakhsh Coffee & Co." and change their colour scheme too.
2. BHARATPE VS PHONEPE
Phonepe Pvt. Ltd. v. EZY Services & Anr was a commercial suit in the Delhi High Court. Two digital payment applications in India, PhonePe and BharatPe got into an argument over using the same suffix Pe as the former claimed their rights over it.
PhonePe moved to court. The court declared that the suffix Pe was nothing but intentionally misspelled Pay that described the service provided by both the parties. The court further clarified that no rights could be claimed over a mark that simply described a word, even if it's misspelt
CONCLUSION
Markets today are flocked with brands, be it any category. It is crucial for a brand to invest in a trademark, Not out of compulsion but out of necessity if it wants to protect itself from being copied and misused. The more unique it is, the more differentiated it is from the rest in the industry it gets easier to be protected.
SOURCES:
1. Starbucks Corporation v. Sardar Buksh Coffee & Co. & Ors
2. Phonepe Pvt. Ltd. v. EZY Services & Anr
This article is written by Siya Ahuja of Gargi College, Delhi University.