WHAT IS A TRADEMARK? ALL YOU NEED TO KNOW

Trademarks, in addition to copyrights and patents, fall under the umbrella of "intellectual property." Protection of intellectual property can be a murky and intricate area of law and commerce. A trademark protects the distinctive name, logo, and symbols associated with your business or product brand. Business names, symbols, logos, sounds, and even colours that are indicative of a particular brand may qualify for trademark protection.


Even if unregistered trademarks used in connection with the sale of goods or services may have some legal protection, the burden of evidence is far higher if someone copies or infringes upon your work. A registered trademark provides the owner of a firm with additional protections, such as presumptive ownership, and reduces the burden of evidence. By registering the trademark, you ensure that it is distinguishable from other registered trademarks.

If you mistakenly infringe upon someone else's name or trademark, the registered trademark owner may sue you and you may be required to pay damages. You could even be required to pay damages to the registered mark owner. If you must then change your company's name or design a new logo, you will waste even more money on marketing materials. You may potentially lose consumers due to the misunderstanding surrounding your goods or identity. Equal costs and fines, in addition to forfeiture of all revenues made under the unregistered mark. The registration of the trademark ensures that no other businesses will use a similar mark and grants your business the exclusive right to operate and advertise under said mark. Your trademark may also entitle you to take recourse against anyone who infringes on it. You may use the symbol "®" after your trademark to indicate that it has been federally registered, enhancing the status of your business.


The Controller General of Patents, Designs, and Trademarks, Ministry of Commerce and Industry of India registers trademarks in India. The Trademark Act of 1999 grants the owner of a registered trademark the ability to sue for damages in the event of trademark infringement. The applicant may be an individual, business, proprietor, or legal body claiming ownership of the trademark. Within a few days, you can file the application for the trademark and begin utilising the "TM" symbol. And eight to twenty-four months are necessary to complete trademark registration processes. A registered trademark is valid for ten years from the filing date, and can be renewed periodically.


The NICE classification for a trademark, also known as the International Certification of Goods and Services, divides trademarks into 45 distinct classifications. Each class of trademarks represents a unique group of goods and services. Applications for trademarks can be submitted in many classes if a business's activities encompass diverse commodities and/or services that fit under distinct trademark classifications. In addition, another entity may file a trademark application for the same mark under a different class, even though the mark is already registered under one class. Consequently, the filing of a trademark application under a single class does not grant absolute monopoly over the mark's use. The exclusive use of a trademark is limited to the class of goods or services for which the trademark was registered. Utilize the trademark class finder to identify the relevant trademark class for your product or service from a database of more than 80,000 commodities and services.


Among the 45 classes , 34 classes come under the Goods section, and 11 classes come under the service section.

Joint ownership of a trademark is the ownership of a trademark by two or more entities. When two or more entities collaborate to provide the same products or services, they file for joint ownership of the trademark for those goods or services. When two legal entities act together as the proprietor of a trademark, they are referred to be the trademark's joint owners. Under the rules of the 1999 Trademarks Act, two entities may file a joint application for trademark registration. The Act establishes guidelines for jointly owned trademarks. It specifies that in the case of joint ownership, the relationship between the joint owners is such that both utilise the trademark jointly, but neither is the sole owner. The trademark shall be registered in the names of both parties involved. Each entity or party will have the same rights to use the trademark as if the rights were held by a single individual. The combined entities or parties are prohibited from using the registered trademark against one another.

The Hero Honda Motors Limited, which was a joint involvement between Hero and Honda Motors dissolved and a new entity called Hero MotoCorp Limited came into being which carried the business by using the earlier established trademark.

In the case of ‘Power Control Appliances vs Sumeet Machines Pvt Ltd’, the court held that there could be only one source and proprietor of a trademark. A trademark cannot have two origins. In this case, the plaintiff (the first party to the case) and the defendant (the second party to the case) are joint owners of the trademark. But the defendant claimed to be the rival of the plaintiff. The court held that this is not permissible in law as the joint owners of the trademark cannot use it in rivalry or competition with each other.


International trademark regulations are basically identical to national filing requirements. An International Trademark will provide ten years of protection for your brand. After ten years, you can submit a renewal application. To register a trademark globally, you must submit an application to a national trademark office of a Contracting State, followed by WIPO Examination of the application (World Intellectual Property Organization). subsequently Examination of trademark application by the National Trademark Office of each country requested. Some of the most infamous incidents of international trademark infringement include:


Retail Royalty Company v. Pantaloons Fashion & Retail Limited & Ors, Delhi high court

Another American clothes retailer filed a trademark infringement lawsuit in India in 2015. American Eagle Outfitters, owned by Retail Royalty Company of San Francisco, filed a lawsuit in the Delhi high court against Pantaloons Fashion & Retail for utilising their name, branding, and logo. Aditya Birla Fashion Ltd. owns one of India's major family clothing retailers, Pantaloons. The latter claimed that their name brand, "Urban Eagle Authentic Outfitters," was distinct from that of the American company "American Eagle Outfitters," and that their logo of a "Urban Eagle" was distinct from the "American Eagle" because it depicts an eagle ascending, whereas in the "American Eagle" logo, the eagle is descending. The court recognised that the plaintiff could not claim monopoly over the word 'EAGLE' because it was a word used in everyday speech. However, if monopoly was claimed on AMERICAN EAGLE, which was the plaintiffs' registered trademark, the situation would be different.


A study of the two logos revealed that the plaintiff's design featured an Eagle about to land/descend, whereas the defendant's logo depicted an Eagle taking flight/ascending; hence, there was a distinction between the two marks. The court ruled that its opinions were just prima facie as the judgement was almost at the expert level and the defendant was not permitted to file return statements and answers because they were only given two days to do so.


Louis Vuitton v. Louis Vuitton dak, Seoul Central District Court

One case of international trademark infringement that made major headlines was the struggle between a South Korean fried chicken restaurant, Louis Vuitton Dak, and the famous French fashion designer, Louis Vuitton.

The court found in favour of the designer after concluding that the restaurant's name, "Louis Vuitton Dak," was too similar to the designer's name. In addition to violating the designer's identity, the restaurant's logo and packaging were eerily similar to his brand. In addition to trademark infringement, the French corporation believed that an association with fried chicken was not in line with their public image. In an effort to address the issue, the restaurant decided to slightly tweak its name by incorporating a play on the Korean phrase for "whole chicken" — "tondak." The name was subsequently changed to Louis Vui Tondak. The court acknowledged that Louis Vuitton has built a global brand reputation. Despite the restaurant owner's small modification to the original name, the new name was still pretty comparable. Although both businesses operated in separate market categories, because one had a well-regarded trademark, the other cannot be permitted to use it and gain an unfair advantage. In resolving the case, the court took into account the length of time the mark was used/infringed and the deliberateness of the infringing activities. The infringer should have relied on his own diligence; had he done so, he would have achieved success without violating LV's rights. The South Korean eatery was fined an additional 14.5 million won (about $12,750 USD) as a result of this violation.


The definition of Trafficking in trademark According to the Honourable Supreme Court, it would be considered trafficking in trademark to register a trademark without intending to use it in relation to any goods, but rather to gain money by licensing the right to use it to others. The term "trafficking" is not defined in the 1999 Human Trafficking Act. However, the definition provided above is accepted. The provisions of the Trademark Act of 1999 have been structured to prevent trademark trafficking.


OSRAM GMBH v. TEJMEET SINGH SETHI AND ANR. CS(COMM) 84 of 2022

The Hon’ble High Court of Delhi has injuncted a party from using the mark 'OSRAM' on the ground that it indulged in the trafficking/hoarding of the trademarks. The Court held that it cannot turn a blind-eye to large scale illegality committed by the defendant who had admittedly filed 416 trademark applications. The Court injuncted the defendants from using the mark 'OSRAM' on the ground that they indulged in the trafficking/hoarding of the trademarks. The Court directed the defendants to withdraw their trademark applications and to pay a sum of rupees 10 lakhs as a part of litigation cost.



This article is written by Muskaan Sinha of K.R. Mangalam University.


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