“Trademark” means a graphically representable symbol or mark that is capable of distinguishing products or services from others, and that may include the shape of the products, their packaging and colour combinations. Further, trademarks are registered under the Trademark Act, 1999 and authorise the trademark owner with a right to sue for damages when any infringement of trademarks occurs. Particularly in India, trademarks are registered by the Controller General of Patents Designs and Trademarks by the Indian Government (under the Ministry of Commerce and Industry).
- “Trademark” includes a reference to “collective mark” or “certification mark” for the use of a mark and should be construed as a reference to the use of a printed or visual representation of the mark.
- Use of a trademark for the products should be construed as indicating the use in any physical or other relationship with such products.
- In relation to services, this is interpreted as an indication of the use of the mark in the context of a statement of the availability, provision or performance of these services.
From where Trademarks Comes?
The first statutory law relating to a trademark in India was the Trademarks Act 1940, which contained a provision similar to the United Kingdom’s Trademarks Act of 1938. In 1958, the Trademarks Act of 1938 was enacted, incorporating the trademark provisions of other laws such as the Indian Criminal Code, the Criminal Procedure Code, and the Maritime Customs Act. The Trademark Act of 1958 was repealed by the Trademark Act of 1999 and is the current Trademark Act.
How to do registration of a trademark?
- Select Your Trademark: To register your trademark first, you need to think of something unique to indicate your product. You must be very careful while selecting because already there are many products available in the market, whether registered or unregistered, and you cannot choose a similar trademark.
- Trademark Application: Any person who claims to be the owner of a used trademark or intends to use it and who would like to have it registered and must file the application at the trademark office in the prescribed manner for the registration of their
The Applicant can also file a single application to register a trademark for different classes of goods and services. The fee payable shall be in respect of each such class of goods or services.
- Advertisement: If an application to register a trademark has been accepted, the Registrar will arrange for the application to be accepted along with the conditions or restrictions to be disclosed as soon as possible after acceptance.
- Opposition to the registration: Any person can file an objection and pay the requisite fee to the Registrar of trademarks within four months of the date of notification or publication of that trademark application.
- Correction: The Registrar will permit errors in or in connection with the application to be corrected or the application to be amended at any time, either before or after the acceptance of a registration application.
- Registration: If an application for the registration of a trademark has been granted and the application has not been contradicted, and the opposition period has expired, the Registrar will issue the applicant with a certificate in the prescribed form confirming the registration of the same with the stamp of the trademark The Registrar may modify the registry or a certificate of registration to correct a typographical or obvious error.
After the registration process is completed, it is valid for ten years and must be renewed within the period of ten years.
Trademark may be rejected on the following grounds:
- Identity with an earlier trademark and similarity of the products or services covered by the trademark; or
- Because of the resemblance to an earlier mark and the identity or similarity of the goods or services protected by the mark, public confusion risks, including the possibility of association with the earlier mark.
Yahoo! vs Akash Arora: The court found that the principle of precedence under trademark law means that if a defendant conducts business under a name similar to the plaintiff’s prestigious and “distinguishable” domain name and both parties are in the same industry, the resemblance of two could be Names misled the public into believing that the defendant’s goods or services belonged to the plaintiff. While deciding the case, Delhi High Court held that “Domain name” serves the same function as a trademark entitled to the same protection. Defendant’s domain name YAHOO INDIA! Which was identical to the plaintiff’s trademark YAHOO! Would confuse and deceive the internet user into believing that both the domain name have the same source and mere putting disclaimer on their site was not enough as the nature of the use of such similar domain name cannot be rectified by putting the “disclaimer only” and defendants and all others acting parties on their behalf are further restrained from using and/or copying the contents of the programs of the plaintiff under the same domain name ‘Yahoo.com’.
Coca Cola Company v. Bisleri International Pvt. Ltd.: Defendant Bisleri had sold and assigned the MAAZA brand, including formulation rights, know-how, intellectual property and goodwill to India in relation to a mango fruit drink called MAAZA to Coca Cola under a framework agreement. In 2008, the defendant company filed the mark MAAZA in Turkey and exported fruit drinks under MAAZA. The plaintiff, Coca Cola claimed permanent injunction and damages for infringement of trademark and passing off. In the present case, the court issued an injunction against the defendant (Bisleri) not to use the MAAZA trademark in India and for export, which constituted trademark infringement.
Conclusion: Everything has its own identity, and that identity signifies the product. It is essential to stand uniquely in the business world, and it is necessary to attract people towards you. Therefore trademark is the way to secure your product from others. If you have to make people choose you, you have to choose something unique trademark that indicates your products. In the developing era, competition in the business world is increasing day by day. There are many chances to get similar products, so choosing different and unique marks which people would remember is essential. Moreover, the most important thing about a trademark is registering it because there are many advantages of the registered trademark. You will get one kind of security by registering your trademark.
Disclaimer: The present article intends to provide general guidance on the subject, and you can also consult us in your specific case.