Protecting your Trademark

Priyanka Sardana and Vijay Sardana

Consumers including children generally speak certain words which are not found in the dictionary like Frooti, Parle-G, Haldiram, Amul, Mother Dairy, Cadbury, Pepsi, Coke etc. whoever, all know what they are talking about. This is an important message for all of us in marketing of food products. What is more important is why these words are not in dictionary and who coined these words and why.

In commercial world these are known as trade marks. Trademarks also existed in the ancient world as well. As long as 3000 years ago, Indian craftsmen used to engrave their signatures on their artistic creations before sending them to other countries. With the flourishing trade in the Middle Ages the use of trademarks increased. Today trademarks (often abbreviated as TM in English) are in common usage and most people on the planet can distinguish between the trademarks for the various products of their interest.

What is trademark?

"A trademark is a sign that individualizes the goods or services of a given enterprise and distinguishes them from its competitors."

A trademark is a word, a logo, a number, a letter, a slogan, a sound, a color, or sometimes even a smell which identifies the source of goods and/or services with which the trademark is used.

Trademark is one of the areas of intellectual property. Its purpose is to protect the name of the product rather than the invention or idea behind the product. Trademarks can be owned by individuals or companies and should be registered with a governmental agency, which is usually referred to as the Trademarks Office. When a trademark is used in connection with services, it is sometimes referred to as a "servicemark". Generally speaking, trademarks should be distinctive and should neither be generic nor merely descriptive of the goods or services they represent. For example, the word "vegetable" cannot be registered as a trademark of a supermarket, since it is certainly descriptive of items which a supermarket sells. In addition, it cannot be registered as a trademark for carrots, since it is a generic term for carrots. On the other hand, the word "vegetable" might well serve as a trademark for bicycles since it has little or nothing to do with bicycles.

Trademarks should preferably not be geographical or primarily a surname. Thus, "Paris" cannot serve as a trademark for perfume. In many countries, trademarks which comprise mere letters and/or numbers (i.e. the proposed trademark cannot be pronounced as a word or words or just has too few letters) or are surnames are considered to be indistinct.

In some instances, trademark registration can still be obtained for trademarks that are merely (i) descriptive, (ii) a surname, (iii) geographic or (iv) indistinct. Trademarks, also known as brand names, are part of everyday life. The average person sees or hears more than 1,500 trademarks each day! Just as your own name identifies and distinguishes you, the main purpose of a trademark is to identify the source of a product and to distinguish that product from products coming from other sources. For example, a trademark helps you to choose between Ivory soap and Dial soap.

Trademarks usually ensure a consistent level of quality - be it good or bad. A mark helps you to use your experience either to return to a desirable product or service or to avoid an undesirable one.

Characteristics in a trademark

A trademark is basically a sign that is used to distinguish the goods or services offered by one undertaking from those offered by another. That's a very simplified definition, but it does explain essentially what a trademark is.

There are basically two main characteristics for a trademark:

  • It must be distinctive, and
  • It should not be deceptive.

Therefore, according to World Intellectual Property Organisation (WIPO) a formal definition of the term trademark could be: "A trademark is a sign that individualizes the goods of a given enterprise and distinguishes them from the goods of its competitors".

To be distinctive it should be its very nature be able to distinguish goods and services.  For example- "Apple" is a very distinctive trademark for a computer, because it has absolutely nothing to do with computers, it would not be distinctive for actual apples. It means if someone who grows and sells apple could not register the word 'apple' as a trademark and protect it, because other producers and traders have to be able to use the same word to describe their own goods. So in general terms a trademark is not distinctive if it is descriptive. It means, it is descriptive if it describes the nature or identity of the goods or services for which it is used.

How to Select a Trademark?

Trademark can also be deceptive, namely when it claims a quality for the goods that they do not have. Typically a deceptive trademark would be one that says that the goods for which it is used have certain qualities when they don't have. An example would be the trademark "Real Juice" for goods that are not made of real fruit juice. One of the key points raised was that when assessing the distinctiveness of a sign for a Trademark it has to be judged together with the goods or services it is to be associated with. It cannot be judged in isolation. Sometimes people seek to achieve a distinctive trademark by using invented words. One of the famous examples of this is the trademark "Frooti". It is not a word that exists in any dictionary and it is not one that would naturally occur to other traders to use. Therefore it can be said to tend to be distinctive. However there is need for caution, your inventive word can be a name of place in other country in that case it can be controversial if you are exporting the product. In that case your invented word can be refused.

Trademarks can also be dependant on images or designs or indeed the combination of images and words.

How to Protect the Trademarks?

To get a trademark known and respected requires considerable investment and usually quite a period of time. Therefore, it is in the interest of everyone seeking to use a trademark to make sure that it is protected as a valuable piece of intellectual property.

To ensure protection of trademarks companies have to rely on trademark laws, but the most common way of protecting a trademark is to have it registered in the Trademark Register, and a great many countries make this a condition of trademark protection. It must first be registered, and once it has been registered it is protected, and its owner is entitled to prohibit others from using it. Registration is not the only way of protecting a trademark, however: unregistered trademarks are also protected in some countries but it is a less reliable form of protection. This is because an unregistered trademark is not protected until it has acquired sufficient distinctiveness and a reputation in the marketplace, which can take considerable time after the initial launch. So if you have an unregistered trademark that has been around a long time and everyone knows it, in that situation in many countries you can seek protection under the law.

What are the options for new start-up companies?

However, if you start marketing your products under a new trademark that nobody knows, that trademark will be very vulnerable. It is possible to call on the protection conferred by the laws on unfair competition, but there too the most important thing is that the mark must have acquired a reputation.

How and Where to register Trademark for International Trade?

Many companies wish to use their trademark in many different countries. In that case companies have to go to each country separately as, like all intellectual property rights, trademarks are territorial rights, which basically means that their protection is obtained by national registration. There are certain regional registration systems which make for easier registration of the trademarks and of course, there are also the international treaties. All these systems ultimately involve registration in every single country and indeed every single territory: We should not forget that, while trademarks can be registered in many countries, they can also be registered in customs territories, and there are some other territories that are not recognized as countries. A good example is Hong Kong, which has a trademark registration system different from that of the People's Republic of China. So, if you want to protect any trademark in Hong Kong you have to go through the local registration procedure. So it is necessary to protect the trademark in all of the countries that you would wish to use it in. Unfortunately, there are considerable differences between national systems.

 

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