A trademark, is a recognizable sign, design or expression which identifies products or services of a particular source from those of others. The trademark owner can be an individual, business organization, or any legal entity. A trademark may be located on a package, a label, a voucher or on the product itself. For the sake of a corporate identity trademarks are also being displayed on company buildings.
Trademarks are used to claim exclusive properties of products or services. The usage of trademarks by its owner can cause legal issues if this usage makes them guilty of false advertising or if the trademark is offensive. Trademarks can be owned, but also licensed. Many toy suppliers are licensees.
For example:
• Bully land obtained a license to produce Smurf figurines.
• The Lego Group purchased a license from Lucas film in order to be allowed to launch Lego.
• TT Toys Toys is a manufacturer of licensed ride-on replica cars for children.
The unauthorized usage of trademarks by producing and trading counterfeit consumer goods is known as brand piracy.
The owner of a trademark may pursue legal action against trademark infringement. Most countries require formal registration of a trademark as a precondition for pursuing this type of action
A trademark may be designated by the following symbols:
• ™ (the “trademark symbol”, which is the letters “TM”, for an unregistered trademark, a mark used to promote or brand goods)
• ℠ (which is the letters “SM” in superscript, for an unregistered service mark, a mark used to promote or brand services)
• ® (the letter “R” surrounded by a circle, for a registered trademark)
A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks comprising marks which do not fall into these standard categories, such as those based on color, smell, or sound (like jingles).
The term trademark is also used informally to refer to any distinguishing attribute by which an individual is readily identified, such as the well-known characteristics of celebrities. When a trademark is used in relation to services rather than products, it may sometimes be called a service mark.
Fundamental concepts:–
The essential function of a trademark is to exclusively identify the commercial source or origin of products or services, so a trademark, properly called, indicates source or serves as a badge of origin. In other words, trademarks serve to identify a particular business as the source of goods or services. The use of a trademark in this way is known as trademark use. Certain exclusive rights attach to a registered mark, which can be enforced by way of an action for trademark infringement, while unregistered trademark rights may be enforced pursuant to the common law tort of passing off. Different goods and services have been classified by the International (Nice) Classification of Goods and Services into 45 Trademark Classes (1 to 34 cover goods, and 35 to 45 services). The idea behind this system is to specify and limit the extension of the intellectual property right by determining which goods or services are covered by the mark, and to unify classification systems around the world.
Terms such as “mark”, “brand” and “logo” are sometimes used interchangeably with “trademark”. “Trademark”, however, also includes any device, brand, label, name, signature, word, letter, numerical, shape of goods, packaging, colour or combination of colours, smell, sound, movement or any combination thereof which is capable of distinguishing goods and services of one business from those of others. It must be capable of graphical representation and must be applied to goods or services for which it is registered.
Specialized types of trademark include certification marks, collective trademarks and defensive trademarks. A trademark which is popularly used to describe a product or service (rather than to distinguish the product or services from those of third parties is sometimes known as a generalized trademark. If such a mark becomes synonymous with that product or service to the extent that the trademark owner can no longer enforce its proprietary rights, the mark becomes generic.
Public policy:–
Trademark law is designed to full fill the public policy objective of consumer protection, by preventing the public from being misled as to the origin or quality of a product or service. By identifying the commercial source of products and services, trademarks facilitate identification of products and services which meet the expectations of consumers as to quality and other characteristics.
Trademarks may also serve as an incentive for manufacturers, providers or suppliers to consistently provide quality products or services to maintain their business reputation. Furthermore, if a trademark owner does not maintain quality control and adequate supervision in relation to the manufacture and provision of products or services supplied by a licensee, such “naked licensing” will eventually adversely affect the owner’s rights in the trademark.
The Indian Trade Mark is enshrined in the Trade & Merchandise Marks Act, 1958. The Act was intended to provide for the registration and better protection of Trade Marks and the prevention of the use of fraudulent marks on the Merchandise. The said Act had twin objective, namely, protecting the interest of the Consumers and protecting the reputation and goodwill of the proprietors of certain marks which are used in the goods. This Act was preceded by the Trade Marks Act,1940. The Trade & Merchandise Marks Act, 1958 was of considerable importance min that it was a central unitary law for the whole of the Country. A look into the scheme of the Act suggests that the object of the law is to deal with the nature of the rights which a person can acquire in respect of Trade Marks, the mode of acquisition and transfer of those rights to others, nature of infringement of such rights and the remedies available therefore. The Law of Trade Marks follows the common law principles and it was drawn from the English Law on the subject namely, the UK Trade Mark Act, 1938.
It was felt that a comprehensive review of the existing Law be made in view of development in trading and commercial practices, increasing Globalization of trade and industry, the need to increase investment flows and transfer of Technology, need for simplification and humanization of Trade Mark management systems and to give effect to important Judicial decisions. To achieve these objectives, the Parliament repealed the 1958 Act and replaced it with the Trade Mark Act, 1999 to bring conformity with the TRIPS Agreement to which India is a signatory. The Act has come into force with effect from September,2003.
The salient features of the Trade Mark Act 1999 are as follows:–
1. The definition of Trade Mark has been expanded to encompass any mark capable of distinguishing the goods or services of a person, from the goods or services of another person and may include any mark capable of graphical representation, including aspects of shape of goods , their packaging, and combination of colors. As a result, even well known designs can now avail protection under Trade Mark Law.
Service Marks.
One of the most significant additions in the new Act is the provision for Service Mark registration. It is a direct effect of the amplification of the definition of Trade Mark to include Services. It is now possible for Business Houses and Individuals offering any kind of service to register their mark. The definition of services under the New Act is an inclusive one, theirfore entities providing services of any description in connection with Business, Industrial or Commercial matters get their service mark registered.
Collective Marks.
Collective Mark, a new concept brought into the Act makes it possible for any “Associations”
to get registration for its mark, Collective Mark is a Trade Mark or service mark used, or intended to be used by the members of an Association, indicating their membership to such Association. The Association is the owner of the mark and the members are the authorized users. For example, the Advertsing Club of India can register its name and Logo as collective marks and prohibit non-members from using or associating with the mark.
Well Known Trade Marks.
2. The concept of well-known Trade Mark is the milestone of the new Act. The provision is adopted to accommodate the requirement of An Article 16 of the TRIPS agreement. The Registrar as per the provisions of the New Act is enjoined not to register a mark that is confusing similar with a well-known Trademark. The well-known Trade Mark is a mark used over particular goods or services that has obtained sufficient recognition among the consumers using such goods or services. The conditions laid down for the determination of a well-known Trademark are (1) Knowledge of recognitions,(2) Promotion of Trademark, (3) Duration, extent and Geographical area, (4) Registration and use. It should be noted that a Trademark may be considered as a Well-known trademark even if it is not, registered in India or used in India, or if such an application is pending in India or the trademark is not well-known in India to public at large. The Indian Trademark law has made a remarkable provision, setting out a detailed criteria for the identification of a well-known Trademark in an area where the International consensus is lacking. The system of maintaining registration of trademarks in Part A and Part B is omitted. Only a single register will be maintained hereafter, thereby giving no room for discrimination between applicants as was done formally. All applicants are now given equal rights and opportunities.
3. Registration of Trade Marks which are imitation of well known Trade Marks, not to be permitted, besides enlarging the grounds for refusal of registration. Consequently, the provisions for defensive registration of Trade Marks are omitted.
4. Single Application for Registration under many class of Goods.
As one of the means to simplify and streamline the procedure of registration ,it is now made possible to file one single application for registration of mark in a different classes of goods or services, instead of filing separate applications. This is expected to shorten the process of search of similar marks during registration.
5. Enhanced term of Protection and renewal.
One of the significant changes of the Act relates to the term of protection o trademarks. It is enhanced from the previous terms of 7 years to 10 years. Further renewal is possible before completion of 10 years in perpetuity.
6.Associated Goods and Services.
The new Act provides the registered proprietor who has a Trademark over goods, to a pre-emptive right over associated services and vice-versa. Thus it prohibits any other trader from using the mark even over ‘similar’ goods or services. It therefore differs from the old Act, which only provided protection from imitation of the ‘same’ goods, thereby effectively enhancing the protection given to a mark.
7.Prohibition of use of Trademark as a Corporate Name.
The protection of Trademark is extended to prevent any ‘Corporate’ or ‘Business concern’ from using someone else’s mark or name of its trade name or name of its ‘business concern’. dealing in goods and services in respect of which the mark is registered.
8.Providing an appellate Board for speedy disposal of appeals and rectification of Applications.
9.Transferring the final authority to registration of Certification Trade Marks to the Registrar instead of Central Governments.
10.Providing enhanced punishment for the offences
To prevent the Sale of spurious goods and falsification of Trademarks, enhanced punishment is incorporated. Punishment will be a minimum of 6 Months and can extend to 3 years and a fine of Rs.50,000/- to Rs. 3 lakhs. It is hoped that this will act as a deterrent to the infringers. Further the New Act has made these offences cognizable in nature. The law enforcement agencies like the Police can arrest the violators without a warrant as they come to know of such activities as these are considered serious offences.
11.Jurisdiction of Courts enlarged
The jurisdiction of Courts has been enlarged empowering them to grant ex parte injunction or other interlocutory orders relating to (i) discovery of documents, (ii) preserving the infringing goods or other evidence, (iii) restraining the offender from disposing off or dealing with the assets in a manner which may adversely affect the plaintiff’s’ ability to recover damages, costs or other pecuniary remedies, thereby securing the trademark owner’s right immediately and effectively.
12.Extension of application of convention Country to include Countries which are members of group or Union of Countries and Inter-governmental Organizations;
13.Assignment of unregistered Trademark.
The impeding provision imposed on the unregistered trademark owners to assign their trademark with the goodwill of the business has now been removed. The present Act permits the unregistered trademarks owners to assign and transmit their marks even without the goodwill of the business.
14. Defensive registration omitted.
The previous Act enabled a trademark owner to register a mark in other classes as a defensive mechanism; the same is omitted. With the advent of the complimentary concept of well-known trademark and the inherent right to secure registration in associated goods or services being recognized in the New Act, the need for this type of registration is no longer felt.
15. Widened definition of Infringement
The scope of bringing an infringement suit is widened. Representation of any mark in an advertisement by an unauthorized user constitutes infringement, provided such advertising takes unfair advantage or is contrary to honest practice of industrial or commercial matters; or it is detrimental to its distinctive character; or is against the reputation of the trademark. Any oral use of a word mark also constitutes infringement.