Introduction:
A trademark is a design, word, slogan, symbol, or combination of any of those elements that help buyers recognize the products or services that are available in the market. It is a type of intellectual property and is important because of money. Trademarks are treasured by business, and any country that values business is going to treasure trademarks. How many ever assets the company has but the most valuable asset is the trademark, it protects their product, their brand and it creates more value for the companies than any other asset they own.
Therefore, it is very important for a business to protect its innovation through trademarks so that no other company can use its innovation. The value of trademarks is different from country to country; some governments care much about their trademarks while some don’t give much importance to the trademarks. Therefore, the value of the trademark and the protection of the trademark is different in every country. The scope of this article is to know how a business innovation can be protected by registration of a trademark.
History
Many years ago people could not write or read that is when symbols came into use. First, it started with marking animals so that farmers can recognize which animal belongs to whom. As the society was developing symbols were used for several determinations. In Greek time, vessels were marked with ‘potters mark’ to determine the source and identification of the maker.[1] Gradually, the use of marks was amplified and it turned out to be a ground to ascertain ownership. As the world was industrializing trademark laws were enacted to protect the businesses against who copied the marks of another.
Nobody has any right to denote his merchandise as the merchandise of somebody else and nobody has the right to pass off his merchandise as the merchandise of somebody else. [2] The first statutory trademark law on registration of trademark and protection against breach was passed in the year 1875 by Britain. Over the time many changes took place in the Act, the last enactment was Trademark Act, 1938.
India borrowed the Trademark Act from Britain and adopted it as a Trademark Act of 1940. After independence in 1947, the Act was changed to Trade & Merchandise Mark Act, 1958. The present Act India follows is Trade Marks Act, 1999 which was operative from 15/09/2003.[3]
Legal Perspective
The aim of the Trademark Act is to grant protection to the users of trademark and direct the conditions on the property and also provide legal remedies for the implementation of trademark rights.
There are many things that can be protected by trademark law. We already know that logos, images, and phrases can be registered for trademarks. Similarly, color, sound, design, and smell can also be protected under trademark law. For example, a woman is wearing shoes that have red soles that mean those shoes belong to a particular designer, and the color red is trademarked for the soles of the shoe. The ringtone of a cell phone can be trademarked. A lot of automobile manufacturers like, apple, Samsung and Redmi have their ringtones trademarked. In some cases, smell is trademarked. For example, Verizon Pumps add a specific smell into their stores. They want customers to experience the smell when they go into the store and that is the trademark of their brand. Well, there are certain things that cannot be protected. Anything which is too generic, too descriptive, and too functional cannot be protected under trademark law.
Registration of Trademarks
The trademark law in India is a ‘first-to-file’ system that needs no proof of earlier use of the mark in the market. A trademark request can be filed based on that it is proposing to use or have an intention to use or use of the mark in the market. A trademark registration in India gives exclusive trademarked rights to the rights holder for the safeguard of their trademark in India. Since India follows a common law system, an unregistered trademark holder can protect his mark and can also take action against a third party under the law of passing off.
Under The Trade Marks Act, 1999 a person who is the proprietor of the trademark can apply for the registration of its mark for goods as well services. One must file an application of trademark at the Office of the Controller General of Patents, Trade Marks, Industrial Designs, and Geographical Indications in India based on the jurisdiction. The office has five branches Mumbai, Delhi, Chennai, Ahmedabad, and Kolkata. A proprietor can file an application of a trademark only if they have a place of business in India. A trademark agent is appointed to check if the trademark is eligible for registration and to conduct clearance searches to check if there is any similar trademark that already exists and after conducting the search trademark agent can file the application with the issuance of power of attorney by the proprietor appointing them as the agent. After the application has been filed it will be published publicly for the examination of trademarks.
During this process, if someone raises any objection against the trademark the applicant must respond to the objections within one month from the issuance of the examination report. Thereafter based on the response, the registrar of Trademark determines whether the trademark has been accepted or rejected or accepted subjected to certain conditions. If the application has been rejected the applicant has a right to appeal against the rejection at the Intellectual Property Appellate Board. Registration of a trademark is completed when it has been published in the Trade Marks Journal and has not been opposed till three months by a third party then it will proceed for registration and registration certificate will be issued for a term of 10 years after which it shall be renewed. The application for renewal can be filed before 6 months of the expiry of the trademark.
International Perspective
The Madrid System for the international registration of marks is the main international system for enabling the registration of trademarks in multiple jurisdictions around the world. This system is governed by two treaties first, the Madrid Agreement Concerning the International Registration of Marks, 1891, and second the Protocol Relating to the Madrid Agreement, 1989. The objectives of this system are that it enables the procurement of protection for marks and the process for national registrations becomes easy because international registration is equal to a package of national registrations.
An application for international registration of a trademark can only be filed by a person or an entity that has a business establishment that is domiciled or a nation in a country party to the Madrid Agreement and Madrid Protocol or the establishment is domiciled or a nation must be a member of the Madrid Union.
This system has several advantages for the proprietor of the mark. After registering the mark at the Office of origin (International Registration office), the proprietor has to file only one application in one language and pay one fee. There is no need to file at different trademark offices for registration in different languages and paying different fees at each office. Another advantage is that, if the proprietor wants to change the name or address in the registration application it can be done directly at the Office of origin.[4]
Case Laws
- Laxmikant V. Patel v. Chentanbhai Shah[5]
In this case, the Supreme Court explained the objective of Trade Mark Law as, “the law does not permit anyone to carry on his business in such a way as would persuade the customers or clients in believing that the goods belonging to someone else are his. The reasons are two, firstly, honesty and fair play are, and ought to be the basic principles in the world of business. Secondly, when a person adopts a name in connection with his business which already belongs to someone else, it results in confusion and has the probability of diverting the customers and clients of someone else to himself and thereby resulting in injury”.
- Reckitt & Colman Products Ltd. v. Borden Inc.[6]
In this case, the Court computed three essentials for an effective passing off action: (1) Goodwill owned by a trader, (2) Misrepresentation, and (3) Damage to goodwill. Therefore, the passing-off action is fundamentally an act in pretense where the common law rule is that no person is entitled to carry on his or her business on the pretext that the said business is of that of another.[7]
Conclusion
Intellectual Property Rights have been present for a very long time. These are the rights that are given to people for their creative work. These rights are in the form of patents, copyrights, and trademarks. They form the intellectual property laws to protect these rights of the people over their creativity. Even though the intellectual property laws have developed over time, the intent of the laws remains the same i.e., that the laws encourage the creativity shown by people and for them to reap benefits from their ideas. Trademarks are also one kind of Intellectual Property Rights. In conclusion, to save our business innovation from any fraudulent activities, it is very important to get it registered.
[1] History and Evolution of the Trademark System (2019). BananaIP Counsels (https://www.bananaip.com/ip-news-center/history-and-evolution-of-trademark/#:~:text=India%20borrowed%20the%20British%20Trademark,30th%20day%20of%20December%201999.)
[2] Southern v. How, 1617
[3] History and Evolution of the Trademark System (2019). BananaIP Counsels (https://www.bananaip.com/ip-news-center/history-and-evolution-of-trademark/#:~:text=India%20borrowed%20the%20British%20Trademark,30th%20day%20of%20December%201999.)
[4] Objectives, Main Features, Advantages of the Madrid System, n.d. (https://www.wipo.int/madrid/en/general/)
[5] AIR 2002 SC 275: (2002) 3 SCC 65: (2002) 24 PTC 1 SC
[6] (1940) 42 BOMLR 734
[7] Southern v. How, 1617
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