Let’s start right with a question – what strikes you when you see an arrow on a shoe or a purple color wrapper on a chocolate? No marks for guesses! This is exactly what is the purpose of a trademark. A trademark can be a mark, logo, sign or any indicator which is capable of distinguishing the goods or services of one enterprise from those of other enterprises to a consumer or a potential consumer.
Typically, trademarks function to protect a consumer from being mislead. For example, when buying Coke, a consumer knows that the consumer is buying a product of The Coca-Cola company and not PepsiCo Inc. Thus, by way of trademarks, consumers associate a mark with its owner, thereby establishing an identity for the owner.
In fact, with due course of time, once consumers start identifying a mark of a company, not only the goodwill of the company flourishes, it may also help the brand owner to diversify the product/service portfolio by applying the mark on a new product/service as consumers would relate to the mark on the new product/service and recognize the origin of such new product/service.
Essentially, trademarks function to eliminate confusion and symbolize a particular quality associated with the product/service. For example, a very well-known trademark – iPhone. As soon as we hear iPhone, we think of a highly sophisticated piece of technology in form of a phone and not an LED.
Trademarks include certification marks and collective mark as also service marks. A trademark or a service mark can be one of the following:
1. Device –
2. Brand – ‘Cola-Cola’ or ‘Pepsi’
3. Heading – ‘I’m Lovin’ It’ or ‘Just Do It’
4. Label –
5. Name - 'Ford' or 'Chevrolet'
6. Word - 'Disney' or 'JEEP'
7. Letter - 'K' for Kellogg's or 'M' for McDonalds
8. Numeral - '8' for 8PM Whiskey
9. Shape of goods - Bottle of Coke or Shape of iPod
10. Combination of colors - The purple shade used in Cadbury chocolates packaging or the red and white colour combination of Colgate toothpaste tubes
A combination of any of the above marks can also be protected. In addition, non-conventional trademarks, that is, marks other than the ones defined above can be registered. Non-conventional trademarks include sound, smell, motion, 3-dimensional marks, etc. For example, the Yahoo “yodel” or the sound mark of Allianz Aktiengesellschaft or the smell of fresh grass for a tennis ball Vennootschap onder Firma Senta Aromatic Marketing of Holland have been granted trademark protection. Further, common words or shapes can also be protected as trademarks only if they have acquired a distinctive character because of being used as a trademark. Thus, the definition of ‘mark’ is very wide and can include any of the above, provided the mark is distinctive.
For registration of a mark, an application has to be filed before the Trademarks Registry, though a mark can be used without registration as well. However, it is advisable to get a mark registered early on, to prevent the mark from being copied or registered by others. The Fourth Schedule of Trade Mark Rules, 2002 provides a detailed classification of the different types of goods and services under which a mark can be registered. A mark can be registered in one or more classes. Also, as a prerequisite to registration of a mark, it is necessary to specify in an application whether a mark has already been in use or is proposed to be used by a proprietor. In case a mark is registered and not used, such mark can be cancelled.
In an application, a mark can be filed for registration in multiple classes. The application fee for registration of a mark in one class is INR 3,500 (approximately USD $50). If foreign protection is to be sought for a mark, then an application under the Madrid Agreement and Protocol concerning International Registration of marks can be filed at the Trade Marks Registry designating the countries in which trademark protection is sought.
As a next step to filing, the Registry examines the application and it may either accept the application or issue objections, which have to be cleared by the applicant. Thereafter, the mark is published to allow an opportunity to parties to oppose it, for example, parties with similar registered marks or parties whose earlier application for the same mark is pending. In case no opposition is filed or an opposition is successfully defended, the mark gets registered. Generally, it takes 2-3 years for a mark to be registered as a trademark.
Once a trademark is registered, the applicant gets the rights to sue an infringer under the Act. A trademark is infringed when someone else uses a trademark that is same as or deceptively similar to a registered trademark for identical or similar goods or services, so as to cause confusion in the mind of the public. The Act provides that an applicant shall be entitled to initiate legal proceedings to prevent infringement and/or recover damages for infringement of a registered trademark.
One of the interesting things about trademark is that not only can an applicant bring an infringement action but also a passing off action under Common Law. Passing off action can be brought for registered as well as unregistered trademarks. In an action for passing off, the owner of the mark has to prove that the owner has earned goodwill which is attached to the goods or services, establish misrepresentation on the part of the opponent and prove that he has suffered damage because of the alleged passing off. This makes passing off proceedings difficult when compared with infringement proceedings and therefore, it is advisable to get the trademark registered in order to better protect the trademark.
Overall, trademark registration is advantageous because it confers the right of exclusive use of the mark, similar to the title deed of a property, thereby making it easy to use/assign/license the mark. Registration also acts as a deterrent and deters others from copying the mark as legal action can be taken for copying and the person can even be sent to jail. Registration establishes prima facie validity of the mark and acts as a shield against infringement suits filed by others.