Articles

Trade Marks

The Trade Mark Law in India is codified and is well developed. In view of the TRIPS a new law has been enacted which has come into force on 15th September, 2003, called the Trade Marks Act 1999.

What Is A Trade Mark

A trade mark distinguishes the goods of one commercial organization from those of others. It can be a word, symbol, logo, sign, label, company name, etc. A Mark now also includes a shape and colour combination. Words may be invented or even dictionary words. The Mark may also contain numerals. A label can also be a trade mark provided it is not descriptive of the goods. There are different criteria for registration of different types of marks e.g. the name of the company, individual or firm should be represented in a special or particular manner. If the mark is not inherently distinctive then the mark may be allowed registration only upon proof that the mark has acquired distinctiveness by use.

Importance Of Intellectual Property

A trade mark can be the most valuable asset of a company and may at times be worth more than the company’s land and factory. The value of brands is paramount while considering a merger or an acquisition of a company. According to the InterBrand Survey 2002 the Coca Cola trade mark was valued at $ 69637 Million, Microsoft at $64091 Million, IBM at $ 51188 Million and Intel at $30861 Million.

The primary purpose of a trade mark is to identify the goods with the person who is manufacturing them or dealing in them so that the public becomes aware of the origin of the goods. It is also used to indicate a certain quality of the product.

In India the importance can be seen by the large number of persons registering their trade marks, 94,120 applications were made in 2002-2003.

What Are Service Marks

Service marks are marks used by the service industry to indicate the source or origin of the services. In India, Service Marks can now be registered under Classes 35 to 42.

What Is A Trade Dress

Trade Dress, is similar to a trade mark, but, has not been defined under the Act. Trade dress is the overall impression one gets of a particular product or range of products manufactured or dealt with by a person and also includes the way in which it is packed or presented to the buyer. A trade dress is totally non-functional without any utility value and is only aesthetic which appeal to the eye. Recently, Wal-Mart the famous U.S. store was held liable for violating the trade dress of the manufacturer of children clothes that had large collars and bold appliques for a particular range of goods. The court held that this was sufficient to distinguish the goods of the manufacturer. The fact that the manufacturer used a consistent design so that the goods were identified with him which resulted in brand loyalty weighed heavily in the minds of the court.

What Are Trade Names

A Trade Name or a trading style, is what a person uses to indicate or identify his business ie. the name under which the person carries on business. The definition of a trade mark includes a “name”. Thus, the trade name, which one uses for ones business can also be used on or in relation to the goods manufactured or dealt with by the person. A person may use its trading name or part of it on goods. Examples of this are XEROX, GODREJ, DUNLOP, etc.

What Is A House Mark

When a person manufacturers different products and uses the same mark on all the products manufactured or dealt with by the person, then such a mark is called a house mark. It is generally used in conjunction with another mark for the particular product. A house mark indicates that all such products emanate from the same source.

How Does One Acquire Trade Mark Rights

A person who uses the mark first can prevent subsequent users from using the mark in respect of the same goods. He acquires common law rights in the mark and can sue for Passing Off.

By virtue of the use of the trade mark the person gets a sort of exclusive right to use the trade mark in relation to the product. Similar rights can also be acquired by registration of the trade mark even if the mark is proposed to be used and is not currently used by the person. A trade mark is a form of property and enjoys protection either under the Trade Marks Act, 1999 if it is registered or under the common law if it is unregistered.

Property rights obtained by use of the mark are superior to the rights acquired by registration if the use is prior to the registration. Prior users are protected even under the Trade & Merchandise Marks Act, 1958. Registration, thus, does not give the proprietor an absolute monopoly to the use of the mark. The Act also protects those who have for several years honestly and concurrently used the mark although the mark had been registered by some other person.

Why Do You Need A Trade Mark

• It identifies the source of the goods
•  It gives the brand recognition
• It guarantees the quality of the product
• It enables brand extensions to other products
• It avoids confusion between two similar products of different manufacturers
• It becomes a valuable asset.

Selecting A Good Trade Mark

Choose a mark that is not suggestive, generic or descriptive of the product. It should not be a dictionary word, geographic name or the name of some place. The main object should be to ensure that it is distinctive of the product. The mark should be such that it does not identify or describe the product.

An Invented Word, which has no meaning is the most ideal mark e.g. PANADOL for pharmaceutical or medicinal products.

The mark should not be descriptive e.g. cellophane is descriptive. It should not praise the product or its quality e.g. Best or Perfect are laudatory and are not registerable.

Names although registrable are permitted only after they have become distinctive of the goods by use for a considerable time.

Geographical names are generally not permitted registration since the traders from that region may want to use it to indicate that their products are from that region.

Words with 1 to 3 alphabets are generally non-distinctive and are not allowed. Some exceptions are made if the word is pronounceable and if it has been used for some length of time.

One should keep in mind that the purpose of having a trade mark is to generate goodwill and increase the value of your business. Separate the name from the logo. Do not use the trade mark as a verb. Do not copy another persons mark or derive your mark from his however catchy or famous it may be. If you do, then it is possible that after you have spent huge amounts on developing the trade mark, you may be faced with an infringement action by that person and loose all the money and effort that you have put in to develop the mark.

Before a trade mark is adopted and used, it is advisable to get a search conducted at the office of the Registrar of Trade Marks to ascertain whether any similar mark is already registered. This reduces the risk of the mark conflicting with a registered mark.

Who Should Register A Trade Mark

A manufacturer or a merchant of goods who wishes to distinguish his goods from those of others can apply for registration. Even those proposing to use the mark at a later date can apply.

Why Should You Register A Trade Mark

•  It serves as a notice to the public that you claim ownership in the mark
• It is evidence of ownership of the mark
• It gives one the exclusive right to use the mark on or in connection with the goods or services set forth in the registration
• It gives the owner the right to sue for infringement. For this to succeed he has only to show that someone else has used a mark which is the same as (or similar to) his own registered mark on goods which are the same as (or similar to) the goods or services for which his mark is registered. If the mark is not registered, the person has a common law right to sue for Passing Off. For this to succeed he must persuade the court, first that the mark used by someone else is associated in the public mind with his own product or service, and secondly that the other person’s goods have been mistaken for his.
• Registration in India can be used as a basis for obtaining registration in foreign countries

Different Classes of Goods

There are 42 different classes of goods prescribed under the trade marks act. An application is made in a particular class depending upon the goods on which it is being used or proposed to be used. Multiple applications can be made in different classes for the same Mark.

Procedure And Duration Of Registration Of A Trade Mark

Application: Any person claiming to be the proprietor of a mark used or proposed to be used by him, may apply in the prescribed form along with the prescribed fees to the Registrar for registration of the mark. The application shall be made to the Registrar where the applicant carries on business. However, before filing an application, it is prudent to obtain a search to establish that no one has applied for an identical or a deceptively similar mark in respect of the same goods.

Examination: The application is scrutinized by the Registrar and is either accepted or rejected. If accepted, the application is advertised in the Trade Mark journal. Before acceptance a hearing may be fixed if the Registrar feels it necessary.

Opposition to Registration: Any person may, within 3 months from the date of advertisement or such further period (not exceeding 1 month) as the Registrar may permit, file an opposition to the registration. The registrar after hearing the parties and considering the evidence, decides whether to permit the registration or not.

Registration: Where the mark has not been opposed and the time for notice of opposition has elapsed or the application has been opposed and the opposition has been rejected in favor of the applicant, the mark will proceed for registration. The registration shall relate back to the date of the application. On registration the Registrar issues a certificate to the applicant bearing the seal of the Registry.

Duration of the Registration: The registration of a trade mark is valid for a period of 10 years and can be renewed from time to time for further periods of 10 years. If the mark is not renewed it will be removed from the register. A mark that has been removed can be restored by filing an application within 1 year from the expiration of the last renewal. By renewing it the mark can be kept alive indefinitely

Licencing

Licencing is an essential part of business today as is seen from the growth of franchisee businesses. The owner must, however, retain the right to control and check the quality as also maintain a connection in the course of trade with the goods. In case of registered trade marks, a registered user agreement is entered into and registered with the Registrar of Trade Marks.

Assignment Of Trade Marks

A trade mark can be assigned by the owner to another person. Assignment implies absolute sale of the trademark. A mark can be assigned with or without the goodwill of the business.

Protection of Trade Marks

Three types of remedies are available for protection of trade marks

•  Civil: The competent courts can be moved for grant of relief against infringement and passing off. The competent court is the District Court having territorial jurisdiction where the Plaintiff resides or carries on business or works for gain or where the infringing articles are available.
• Criminal: Criminal Complaints can also be filed against persons who have infringed the mark in addition to a Civil action.
• Administrative: Filing opposition and cancellation proceedings before the Registrar of Trade Marks.