A registered trademark (popularly referred to as a brand name) is a visual symbol that can be a word to indicate the origin of the products, a signature, a name, a device, a label, numbers, or a combination of colours used or services or other items of commerce to distinguish them from other similar goods or services sourced from others. It is a distinguishing mark that identifies specific goods or services as being manufactured or provided by a specific person or company. Its origin dates back to ancient times when artisans would reproduce their signatures or “trademarks” on their artistic or utilitarian products. Over the years, these marks have evolved into the current trademark registration and protection system. The system helps consumers to identify and purchase a product or service as its type and quality indicated by its unique brand suits their needs.
Meaning of Trademark
A trademark provides protection to the trademark owner by granting the exclusive right to use it or authorising someone else to use it in return for payment. The term of protection varies, but a trademark can be renewed indefinitely beyond the term by paying additional fees. Trademark protection is enforced by the courts, which in most systems have the power to block trademark infringement.
More broadly, brands encourage initiative and enterprise around the world by rewarding brand owners with recognition and financial gain for different products or services. The system empowers people with skill and entrepreneurship to produce and market goods and services on the fairest possible terms, thereby facilitating international trade.
A trademark is a word, phrase, symbol, or design, or combination of words, phrases, symbols, or design, used in commerce that identifies the origin of one company’s goods or services and distinguishes them from those of another.
Concept of “Mark” and “Trademark”
As stated above, the definition of “trademark” under Section 2(1)(ZB) has been enlarged to mean a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from others and may include the shape of goods, their packaging and combination of colours and covers both goods and services.
“Mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof”. [Section 2(1)(m)].
Being an inclusive definition, it will thus include any mark within the definition of the trademark so long as the effect is:
- capable of being represented graphically; and
- capable of distinguishing the goods or services of one person from those of others.
Examples of famous Trademarks and their cases
Yahoo!, Inc. v. Akash Arora and Anr
The first historical ruling on cybersquatting. For the first time in India, the High Court in Delhi found that a domain name performs the same function as a trademark and is entitled to equal protection. The defendant had a domain name, “Yahoo India!” which was identical and phonetically similar to the plaintiff’s trademark “Yahoo!“. The court ruled that internet users would be confused and led to believe that both domain names have the same source. The defendant defended himself by posting a disclaimer on his website. However, it was pointed out that a mere exclusion of liability is not sufficient. Because the nature of the internet is such that a disclaimer cannot correct the use of a similar domain name, and it doesn’t matter that “yahoo” is a dictionary word.
DM Entertainment v.Baby Gift House and Ors
Daler Mehendi, the famous pop star from Punjab, has a large fan base and is extremely popular amongst Punjabi pop music lovers. DM Entertainment was incorporated in 1996 to manage the artist’s escalating career. The defendant’s company was making a large business by selling miniature dolls of the artist and cashing on his popularity. The plaintiff company was extremely aggrieved and filed for a permanent injunction from infringing the artist’s right of publicity and false endorsement leading to passing off.
The plaintiff company was assigned all rights, titles and interests in the personaliy of the artist along with the trademark, Daler Mehendi. The plaintiff argued that unauthorised or unlicensed use of the artist’s reputation in relation to goods or services would mislead the public into believing that the goods and services were related to the singer and thus would lead to counterfeiting. Plaintiff also stated that such exploitation for commercial exploitation was made without the proper authorisation of the individual or another person authorised by the individual and constituted a violation of the individual’s publicity rights.
Character Merchandising is an area of law that has yet to be explored in India. This was the first celebrity merch case where the artist’s publicity rights were adequately acknowledged.
Milmet Ofho Industries and Ors.V.Allergan Inc
The Supreme Court granted trademark protection to a well-known foreign trademark. The court prohibited an Indian company from using the OCUFLOX trademark. The judgment was issued despite the fact that the mark was not used or registered in India. The court ruled that the defendant was the first to enter the market and take over the brand. It does not matter that the defendant did not use the trademark in India if it is the first to enter the world market.
In the field of health, it is extremely important to avoid any possibility of deception and confusion, taking into account that the public interest is not endangered.
The Coca Cola Company v Bisleri International Pvt. Ltd.
Defendant Bisleri had sold and assigned the MAAZA brand, including formulation rights, know-how, intellectual property rights and goodwill from India in relation to a mango drink called MAAZA to Coca Cola through a master agreement.
In 2008, the defendant company applied for registration of the MAAZA trademark in Turkey and started exporting fruit drinks under the MAAZA name. The plaintiff, Coca Cola, sought permanent injunctive relief and damages for trademark infringement and counterfeiting.
The court issued an injunction against the defendant (Bisleri) for using the MAAZA trademark in India and for export, which constituted trademark infringement.
Benefits of having a Trademark for business
- Exclusive Rights: The registered mark owner enjoys an exclusive right to the mark. The owner can use the same for all products included in the requested class(es). In addition, the owner can enjoy exclusive ownership of the mark and prevent others from unauthorized use of the mark under the same class in which it is registered. It gives the right to sue for the unauthorised use of the mark.
- Builds trust and Goodwill: The established quality of its products and services is known to all through the trademark and inspires trust and goodwill among customers in the market. It helps attract lasting customers who are loyal and always choose the same brand.
- Differentiated Product: It makes it easier for customers to find your products. It differentiates your product and product identity from existing and expected competitors and acts as an efficient business tool. Logo can communicate your vision, quality or unique characteristic of your company and any organisation.
- Product Quality Recognition: Gives product quality recognition. Customers associate the quality of the product with the brand. In the market, this image is created about the quality of a specific brand, which helps attract new customers as you can distinguish the quality of a product by the logo/brand.
- Wealth Creation: Brand registration creates an intangible asset, i.e. intellectual property, for an organisation. The registered trademark is a created right that can be sold, assigned, licensed or commercially assigned. Likewise, the brand is an intangible asset that gives an advantage to the organisation.
- Use of ® Symbol: Once the trademark is registered, you can use the ® symbol on your logo, stating that it is a registered trademark and no one can use the same trademark. It is exclusive of all types of usages as well as rights. If someone else uses the trademark, you can also sue the party if the trademark is registered.
- Protection against infringement: No competitor or other person can use the wordmark or logo registered by you under trademark. However, if, in any case, one uses it without the owner’s approval of the trademark or makes any deceptive use of the same, the owner can get the legal protection under the Act and stop the person from doing so.
- Protection for 10 Years at low cost: Trademark registration is done with a very low maintenance cost. Once you register the trademark, you have to pay the maintenance or renewal costs after ten years of registering the trademark. It is profitable and gives your company a brand image unique recognition.
- Global Trademark Registration: If you wish to register the trademark in countries other than India, the trademark registered in India can be used as a basis for registration there. For anyone looking to expand outside of India, having the registered trademark in India combined with the goodwill established in the country can provide a good foundation.
- Gain human resources: Young minds aspire to join big brands as they act like tycoons. It inspires the organisation’s positive image, and thus candidates are easily attracted to it. This reduces the cost of hiring and related activities.
Disclaimer: The present article intends to provide general guidance on the subject, and you can also consult us in your specific case.
