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TRADEMARK
Trademark is defined as an Intellectual Property consisting of a unique word, design, logo or symbol that we come to see in our day to day life. It is generally used by an organisation or company or institution. The owner of a trademark can be an individual or a business entrepreneur or legal entity. As per the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS), Trademark is defined as “any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of another, shall be capable of constituting a trademark.” In the world of Consumerism, where every product or service is sold, it is necessary to have a trademark, which is unique for an individual company or product so that any other company fails to use the brand or goodwill of that original company. For instance, Mr Banerjee owns a shoe company named Bata store. There are hundreds of shops with the similar named in the local market. Mr Banerjee recommends one of his friends to buy brand new shoes from Bata Store. It is nearly impossible for him to identify the original shop in the local market. Therefore, a unique Trademark is essential for a company to avoid confusion among buyers and also to maintain the goodwill of the original company in the market. Ola, Uber, Colgate, Amazon, Dettol etc. have a unique trademark.
Trademark can be registered or unregistered. In India, it is not mandatory to register trademark. But, unregistered trademarks definitely possess some problem. Unregistered trademarks can be protected only in its own geographical area. On the other hand, there are many uses of Registered Trademark which are pointed below:
Multiple recognition in which the trademark can be protected in any part of the world.
Ownership advantages.
Popularity of Trademark.
The first legislative act related to Trademark was established in 1266 under Henry III. The main purpose of the act was to give a command to all bakers to use a distinctive symbol or mark for the bread they sold. The first Trademark Laws came into existence in the 19th century. In France, the Trademark Laws or Comprehensive Trademark System came into existence in and around 1857. Symbol ™ or ® signify trademark.
NATIONAL FRAMEWORK FOR TRADEMARK PROTECTION
Earlier, there were two main laws relating to Trademark namely Trademark Act 1999 and Common Law Remedies. The main purpose of Trademark Act was to look after the registration process, protection of the trademark, rights procured by registration of trademark, ways of transfer, nature of the infringement of rights, penalties related to infringement and the remedies available to the owner for the infringement of their rights. These laws are administered by Controller General of Patents, Designs, Trademarks. This is a government agency which reports the entire task to Department of Industrial Policy and Promotion under Ministry of Commerce and Industry which regulate Trademark Laws.
The Legal Protection available to Unregistered trademark are mentioned in the common law remedy in India. Passing off of trademark is a tort which is used under common law remedy to protect the goodwill of the trademark.
There are a number of uses of Registered Trademark. Registered Trademark provides various evidence regarding the ownership and validity of the trademark, provides statutory protection, prevent others to use the trademark illegally or unlawfully, and also a suit can be brought if the rights of the owner are infringed.
If the mark, logo, symbol or design is capable of representing graphically, it can be registered. Also, if the mark is differentiating the goods or services of one part from that of another on the basis of colour, way of packaging, shape etc., it is capable of registering.
There are also a few limitations regarding the person registering the trademark. The party who claims to be the owner of the trademark can register. Moreover, the party can register with the trademark office under whose jurisdiction the place of the owner’s business is located.
The grounds for which some marks or symbols are refused for registration of trademark are categorised into two factors: Absolute and Relative.
According to Section 9 of the Trademark Act 1999, the absolute grounds for which the marks are refused for registration include the marks devoid of a distinctive character, marks which become customary in the language and practice of trade, symbols which contain obscene or scandalous matter or any marks which is likely to cause harm to the religious interest of a particular class, caste, section of Indian Citizen.
According to Section 11 of the Trademark Act, the relative grounds for which a mark is refused for registration process include confusion related to the mark as the mark was identified with an earlier mark or its similarity with another mark, or if its use in India is liable to be prevented by any law.
Now, a new law related to trademark came into effect which is the Trademark Rule 2017 on 6th March 2017 with the cancellation of Trademark Rule 2002. These rules are being established in order to simplify and explain the registration process of trademark in India. The Trademark Rules 2017 mainly highlights the categorization of applicant such as an individual, Start-Up, Small Enterprise etc., increase in the official fees , reduction in forms from 75 to 8, provision for Sound Mark, requesting for well – known trademarks, e – communication in order to fasten the processing, limited adjournments, prior user affidavit in case of prior use, provision for hearing and working through video – conferencing or audio – visual communication services and some more rules. Through this new rule of Trademark, Trademark rule of 2002 was repealed.
INTERNATIONAL FRAMEWORK FOR TRADEMARK PROTECTION
Along with the laws of the residential country for trademark protection, there are many international laws and other unique system which protects the trademarks and looks after various processes related to trademark in the international era. In the past, the protection of trademark internationally or in different countries were supervised by various international laws. This led to a lot of confusion. But, in the present time, companies or owners mainly depend on one or more Multinational System under the jurisdiction where protection of trademark is required.
One such important Multinational System mentioned above is the Madrid Protocol System. As of September 2017, it is reported that 87 countries are participants to the Madrid Protocol System. And as of June 2015, 94 countries joined this Multinational System. This includes US, EU, most non – EU European countries, China, South – Korea, Singapore, Australia, various middle eastern and African countries and many other commercially significant countries. India is a part of the Madrid Protocol System since July 2013. This multinational system is administered by only one application. This means there is an opportunity to obtain trademark protection in more than one country with the help of only one application. The applicants also get an opportunity of one registration and one renewal process. Taking into account the aspect of cost, it is estimated that consolidated filing leads to cost saving over individual national application. It signifies the cost saving in case of filing individual application directly with each country’s national trademark registry. In this particular multinational system, there is also an advantage of getting trademark protection in more than 80 jurisdictions. But as we know, there is always a good and bad side of every process, there are also few disadvantages of this system. The range of goods and services covered under this system is quite narrow than other. Besides, the trademark covered must be used in the designated country i.e. the countries which use Madrid Protocol System. This is to insure any action related to cancellation or any other invalidation process which is based on non – use of the trademark covered. Another major disadvantage of this process is that the registration process is dependent on home application or registration of trademark for first five years. It is said that if this right is attacked in any way or the other, then the international protection of the trademark will be lost. This is a very problematic situation for owners and companies. There is a provision for the conversion to national rights but it is available at a significant cost.
Another significant Multinational System is the CTM system for trademark protection. It was established in 1996 in order to protect trademark. It consists of 27 members of European Union (EU). The full form of CTM system is Community Trade Mark. This Multinational System is supervised by European Union Intellectual Property Office in Alicante, Spain. This System gives an opportunity to the applicants to file only one application that is a single unified application for all EU members. If the CTM registration is granted, EU members can use it initially for 10 years and then it has to be renewed for a successive period of 10 years. Application and Registration in the CTM System is automatically extended to the new member over the process of accession. If the CTM application or registration is declared invalid or is revoked, there is a provision for the owner to convert to separate national applications in the member states of EU where the objection of any third party is not allowed or do not apply. There is a unique feature in this system of trademark that is the applicants can file the application electronically. This electronic application can be filed in two or more than two languages of EU. We can also list a few disadvantages of this system too. There is a restriction or objection which is based on single national trademark registration process. This objection in the registration process leads to delay in the entire CTM registration process. In this system, it is quite difficult to identify a potential third party conflicts. Taking into account both the advantages and disadvantages of the system, both have some unique features in their own way.
On the other hand, India signed a few international agreements related to trademark. They are listed as follows:
Paris convention for protection of Industrial Property which came into effect from 20 March, 1883. It is one of the first treaties related to Intellectual Property. It was signed in Paris, France.
The Nairobi Treaty on the Protection of Olympic Symbol which came to force on September 26, 1981. The States covered under this treaty are obliged to perform their duty towards the protection of the Olympic Symbol – Five Interlaced Ring.
Protocol related to Madrid Agreement concerning International Registration of Marks.
Landmark cases on Trademark
Starbucks v Freddoccino
Starbucks was a famous Coffee House Company which is based in America. It was founded in 1971 in Seattle, Washington. As per the report of 2019, Starbuck is widely spread and operated in and around 30,000 locations all over the world.
It was not known to quite a large mass that Freddoccino was invented by Kostis Zompanakis. He was a Greek Entrepreneur. In the year of 2008, he decided and sold the Freddoccino to Nestle. In the year 2016, Starbucks filed a suit against Coffee Culture Café of New York for launching a similar drink “Freddoccino”. It was reported that as per the lawsuit, that not only the drink tastes similar, but the structure of the name of the drink also appear similar. This can create enough Confusion in the marketplace and may also lead to deterioration of the brand value of the original company that invented Freddoccino. Though Starbucks trademarked the term Freddoccino, Coffee Culture created a distinctive packaging in order to show that it is trademarked, yet it is not. Coffee Culture tried to change the name and named the drink as “Freddo” but Starbucks decided to continue the suit.
Metro Shoes v Flipkart
Flipkart Private Limited is an online shopping company. It was founded by Sachin Bansal and Binny Bansal in the year 2007 in Bangalore, India. Metro Shoes is a Footwear Retailer company which is widely spread in and around 100 cities. It operates over 200 outlets. The Metro Shoes Company filed a lawsuit against Flipkart Company in the Bombay High Court. The case is on Trademark Infringement. According to the Lawsuit, Flipkart sold Shoes along with many other items under the brand name “Metronaut”. This brand name was launched by Flipkart in the form of a Private Label brand in the year 2017. Metronaut supports around 300 styles in Men’s Clothing and other accessories. They alleged that the mane of the brand is similar and they are trying to infringe their trademark rights.
The Coca – Cola Company v Bisleri International Pvt. Ltd.
In this case, Bisleri is the defendant and Coca – Cola is the plaintiff. Bisleri signed a master agreement with Coca – Cola to sold and assign the trademark Maaza which is a mango fruit drink. Besides the trademark, the agreement also included formation rights, intellectual property rights and many more thing. In 2008, Bisleri filed a registration for the trademark name Maaza in Turkey. It also started exporting the fruit drink in the name Maaza. The Plaintiff Company claimed damages from the defendant for the infringement of trademark rights and passing off. The Court gave a judgement. It ordered for an interim Injunction against Bisleri from using the trademark Maaza and exporting the drink.
Cadila Healthcare v Cadila Pharmaceutical LTD.
In this case, it was held by the Supreme court that whether the defendant and the plaintiff work in the same field or trade in the same or similar product is not significant enough to be noted. The court gave some criteria for determining the passing off of unregistered trademark. This includes the nature of the marks in the form of word, label, composite, the nature of goods or service for which marks are used, similarities in the character, nature, performance of goods of the rival traders, class of the buyers who are likely to purchase the goods with the goods along with some other circumstances that may be relevant.
Contemporary issues in recent time
In the recent times, we can find numerous challenges in the trademark management process. The Trademark Management of a company or organisation or institution can take place both from the internal sector and they can also be external. In order to deal with these issues, we have to find proper solution.
Internally, at first, we need to develop a proper trademark management strategy in order to plan out the steps related to a trademark’s life which includes creation, application, legal matter, registration, renewal, monitor misuse. Secondly, Companies need skilled and trained trademark workers to plan out the trademark management strategy effectively. Workers should have a solid background of trademark and also have a strong base to organise IP strategy. Thirdly, developing a proper trademark which is new by communicating and giving some time to the design and marketing is a very important process. More focus should be given regarding the value determination, searching for a new and unique trademark.
Properly using the current trademark and protecting the existing trademark is now considered as a great challenge nowadays. Monitoring the trademark misuse has become quite time – consuming.
After going through the internal issues, let us look after the Issues which hamper the growth of the trademark externally. Trademark Troll is a person who registers a trademark without the intention of using it. Then it files a suit against anyone who attempts to use it. This has become a major problem. This is because it deeply affects an organisation’s trademark management. Trademark Troll can put any unregistered asset of the organisation in danger and then the organisation in the risk of legal action. Secondly, the online world that is the internet is another rising issue in the contemporary world. Internet consists of countless pages, tagging, coding. In this world of internet, Trademarks can be misused or infringed or misdirected to any other unauthorized people without the notice of the organisation. Finally, the global nature of the use of trademark posed a great challenge. It means the trademark is planned to be used in the domestic country but there is a possibility of threat to the trademark to be misused in the outside world.
Therefore it is very much necessary to use the trademark carefully.
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