Legal Protection of Trademark: A Sound Business Decision
Priyanka Sardana and Vijay Sardana

IN our earlier article we had discussed trademark and why it should be protected. Generally speaking, a trademark is a word, symbol, phrase or device which uniquely identifies a particular company or individual. Let us understand the trademark concept with the help on an example i.e. Coca Cola – world's most valued Trademark.

There are many types of bottles used to contain soft drinks but only one with the distinctive logo and design of Coca-Cola. Each element of a Coca-Cola bottle- the shape, red imprint and name-could be considered a trademark of the Coca-Cola Company. Because all of these elements have been legally registered with the United States Patent and Trademark Office (USPTO), no other soft drink company can create a similar trademark.

This same philosophy holds true with distinctive slogans or brand names. A photocopying machine is not a trademark, but ‘Xerox’ is. Any product bearing the name Xerox implies the same level of quality as the original product. Sometimes a trademark becomes so popular that it replaces the generic description of the product. Consumers ask for ‘Xerox’ instead of photocopy, for instance, even though the name ‘Xerox’ is a registered trademark of the Xerox Company. Other trademarks which have become universal in India include Frooty, Xerox, Jacuzzi, Band-Aid, Tetra Pak, etc.

Legal Protection of Trademark

A trademark should be registered with agencies such as the Patent and Trademark Office of government of India for maximum legal protection. Trademark laws work much like copyright laws in the sense of first rights. Once a company or individual successfully registers a trademark, a circled “R” or the abbreviation “Reg. TM” can be legally imprinted on the product or slogan.

Please note, there is no such condition as ‘trademark pending’, unlike applications for patents which may take years to process through the Patent office.

What can be registered as Trademark?

Sometimes the criteria for trademark registration can be challenging to understand. Companies and individuals cannot simply register ownership of common words or phrases, but they can turn a distinctive combination of words into a trademark. The Nike shoe company has a legal right to trademark the phrase ‘Just Do It’ because the words have become an identifiable slogan similarly another prominent example in India is Pepsi's slogan ‘Yeh dil mange more’. The Nike swoosh (stylized check mark), as simple as it may appear, is also a registered trademark. This doesn't mean, however, that another company can't use a stylized check mark, but it can't be readily confused with the swoosh logo owned by Nike.

Companies and individuals who have registered a trademark will pursue many legal avenues to protect it. Courts must decide if the unauthorized use of a trademarked slogan or product by others has caused actual damage in the marketplace. A local restaurant featuring fried chicken, for example, cannot use the image of an elderly man in a white suit as its official logo. This would create confusion with the registered trademark of Colonel Sanders owned by Kentucky Fried Chicken. Kentucky Fried Chicken's registered trademark does not protect individual words, just the entire phrase or symbol.

India Trademark Law

The new Trade Marks Act 1999 and Trade Marks Rules 2002 have come into force with effect from 15 September, 2003.

What Is Covered Under Trademarks

Under the Act, a trademark is a mark used in relation to goods and services so as to indicate a connection in the course of trade between the goods and some person having the right as proprietor to use the mark. New Act has made it possible to register Service Marks in India. Trademark Registry has started accepting service mark applications from September 15, 2003.

Definition of a Trademark for registration

A ‘Mark’ may consist of a word or invented word, signature, device, letter, numeral, brand, heading, label, name written in a particular style, the shape of goods other than those for which a mark is proposed to be used, or any combination thereof or a combination of colors and so forth. Subject to certain conditions, a trademark may also be symbolised by the name of a person, living or dead.

For the purpose of registration, a mark chosen should not be deceptively similar to an existing mark of another person and not the one expressly prohibited under the Act. The marks devoid of any distinctive character, or which are only indicative of the kind, quality, quantity, purpose, value or geographical origin of the goods, or which are marks already in vogue in the trade due to their customary use may not be registered. But these disqualifications do not apply to marks, which have already acquired distinction due to their popularity and consistent use. The new Act also seeks to make internationally acclaimed brand names freely available for use in India.

Who can apply for a Trademark?

The right to use a mark can be exercised either by the registered proprietor or a registered user. A person may apply for registration of a trade mark to the Trademark office under whose jurisdiction the principal place of the business of the applicant in India falls. In case of a company about to be formed, anyone may apply in his name for subsequent assignment of the registration in the company's favor.

Before making an application for registration it is prudent to make an inspection of the already registered trademarks or to apply for “search Report” to ensure that registration may not be denied in view of resemblance of the proposed mark to an existing one or prohibited one.

Duration of a Trademark

The present term of registration of a trademark is ten years, which may be renewed for a further period of ten years on payment of prescribed renewal fees.

Remedies for Infringement and Passing-Off

Two types of remedies are available to the owner of a trademark for unauthorized use of his or her mark or its imitation by a third party. These remedies are:  ‘an action for infringement’ in case of a registered trademark and ‘an action for passing off’ in the case of an unregistered trademark. While former is a statutory remedy, the latter is a common law remedy. In a suit for infringement or for passing off, the relief that the court may grant includes injunction and either damages or an account for profits with or without any order for delivery of the infringing labels and marks for destruction or erasure.

Although registration under the Act is prima facie evidence of validity of a trademark, yet the registration can not upstage a prior consistent user of trademark, for the rule is ‘priority in adoption prevails over priority in registration’.

Filing and Registering

Under the Indian Trademark Act, which uses International Class of Goods and Services it is essential to file a trademark application for registration in proper class(es) using acceptable description of goods/services to obtain registration quickly.

Opposition / Cancellation/ Rectification / Appeals

Once a trademark is registered, it is deemed valid until it is canceled through a cancellation action. Upon discovery of an application for a conflicting mark, it is essential that a strong and vigorous opposition be filed to block that application from effecting registration.

In most of the cancellation actions filed in India, the ground for cancellation is based on non-use of a registered mark. Two major grounds for invalidating a trademark registration are:

(a) Conflict with previously registered or well-known mark, and

(b) Lack of inherent registrability.

Licensing/Assignments, Change of Names & Recordals

Recordal of trade mark licenses are not mandatory under Indian Trade Marks Law, unless the marks are registered in which case a Registered User Agreement can be recorded with the Registrar of Trade Marks. It is advisable to record such Registered User Agreement or otherwise, in contested proceedings the situation can become complicated as the User may not have a right to initiate legal proceedings independently. Similarly, when ownership of a trademark registration/application or a corporation changes due to assignments or merger, and when company name changes, it is critical to properly register the change at the Trademarks Registry to give proper effect to the trademark registration and/or to establish proper evidence of use in the event of a cancellation action.

Conventions and International Treaties

India has declared certain countries as convention countries, which afford to citizens of India similar privileges as granted to its own citizens. A person from a convention country, may within six months of making an application in his or her home country, apply for registration of the trademark in India. If such a trademark is accepted for registration, such foreign national will be deemed to have registered his or her trademark in India, from the same date on which he or she made application in his or her home country.

Where the applications have been made for the registration of trademark in two or more convention countries, the period of six months would be reckoned from the date on which the earlier or earliest of those applications was made.

Recovery of damages for infringement of a trademark is possible if the infringement takes place after the date of registration application with the concerned trademark office in India, yet the deemed seniority in making application in home country may entitle the applicant to initiate an action in India for injunction, delivery of impugned labels etc.