Trademark? Everything You Need to Know

– TUSHAR TIWARI (BA-LLB 3RD YEAR), LAW STUDENT, FIMT, GGSIPU; NEW DELH

The term trademark refers to a recognizable insignia, phrase, word, or symbol that denotes a specific product and legally differentiates it from all other products of its kind. A trademark exclusively identifies a product as belonging to a specific company and recognizes the company’s ownership of the brand. Trademarks are generally considered a form of intellectual property and may or may not be registered. The trademark act came in the year 1999, under which it states that the act extent to whole of India, Section 1& 2.

FUCTIONS OF TRADEMAERK
➢ Firstly, a trademark indicates the source or origin of the goods, products, or services. In this case, it is presumed that any particular good can have only one origin.
➢ It assures the quality of the goods bearing the trademark to the consumers.
➢ Apart from the quality, which is related to the goodwill of the product, the trademark also creates brand awareness and serves the marketing purposes and advertising aspects. In other words, companies put a great number of resources into developing any product, marketing it to customers, providing customer support and backing up their products with warranties. Trademark assures that the effort to serve the consumers pays back.
➢ Provides legal protection and guards against counterfeiting and fraud of a particular brand.
➢ Finally, trademarks are used to differentiate the product from others. This is the distinguishing factor that falls under distinctiveness. The idea is that trademarks would distinguish marketed goods and services from those of competitors.

PROCESS OF TRADEMARK REGISTARATION
It is a crucial legal process designed to protect unique brand assets and provide exclusive ownership rights to their owners. It involves obtaining legal recognition and safeguards against plagiarism for trademarks such as logos, names, symbols, or phrases, used in connection to specific goods or services. In India, trademark registration is governed by the Trade Marks Act, 1999, and administered by the Office of the Controller General of Patents, Designs and Trademarks.
The process of trademark registration in India involves several stages. Here is a brief overview of the typical process:

1. Trademark Search: Conduct a thorough search to ensure that your proposed trademark is unique and not already registered or being used by others in a similar or related class of goods / services. This will help you assess potential conflicts and objections during the Trademark Registration process. For this, you need to determine the appropriate class or classes of goods or services for registering your Trademark, based on the Nice Classification system. The Nice Classification system categorizes goods and services into 45 classes, with each class representing a distinct category.
2. Application Filing: Prepare and file the trademark application with the Office of the Controller General of Patents, Designs and Trademarks (CGPDTM) in India. The application should include the necessary details, such as the applicant’s name, address, trademark representation, and a list of goods or services for which the mark will be used.
3. Objection / Acceptance by the Trademark Examiner: Once the application is filed, the trademark office examines it to assess compliance with legal requirements. They review factors such as distinctiveness, similarity to existing trademarks, and adherence to trademark laws. If any objections or discrepancies are found, the applicant may need to address them and provide suitable responses within 30 days of receiving the objection. If the replies are satisfactory, the examiner will proceed to the next stage.
4. Journal Publication: If the trademark application passes the examination stage, it is published in the Trademarks Journal. This publication allows third parties to oppose the registration within a specified period of four months. If no opposition is raised, the application proceeds further to the last stage.
5. Opposition: However, if a third party raises opposition during the time the mark is published in the Trademark Journal, the applicant will have to file an appropriate reply and counterevidence to the opposing party. If the opposing party does not find the reply satisfactory, then the Department shall call a show cause hearing to resolve the issue.
6. Trademark Registration: Upon successful completion of the publication stage, the trademark registration is granted, and a Certificate of Registration is issued. The registration is valid for ten years from the date of application and can be renewed indefinitely by paying the trademark renewal fees at regular intervals

BENEFITS OF REGISTRATION OF TRADEMARK IN INDIA
➢ Legal Protection: Registering a trademark in India provides legal protection against their unauthorized use, thereby preventing others from imitating or infringing upon them without the permission of the owner. It gives the owner the exclusive right to use the trademark in connection with the goods or services for which it is registered.
➢ Brand Identity and Recognition: Trademarks help establish a unique brand identity and make your goods or services easily recognizable to consumers. Registering your trademark in India ensures that you can build a distinctive brand presence and protect it from being exploited by competitors.
➢ Market Advantage and Business Growth: Trademark registration provides a competitive edge to your business in the market by differentiating your products or services from others. It helps build trust and loyalty among consumers, leading to increased sales, customer retention, and business growth.
➢ Legal Recourse and Enforcement: With a registered trademark, you have stronger legal grounds to enforce your rights and take legal action against infringers in India. It allows you to seek remedies, such as damages and injunctions, to protect your brand’s reputation and market share.
➢ Licensing and Expansion Opportunities: Trademark registration opens doors to licensing and franchising opportunities. It allows you to grant licenses to third parties to use your trademark, generating additional revenue streams and expanding your business presence in India

OBJECTION and OPPOSITION UNDER TRADEMARK ACT

LANDMARK CASES ON TRADEMARK INFRINGEMENT

1) COCA COLA VS BISLERI
Who is going to take the “MAAZA”?
Well, it is mandatory to mention the famous case of coca cola and bisleri over the trademark Maaza where Bisleri assigned its trademark Maaza to Coca Cola to sell and export products in and from India and immediately after, filed a trademark Application in Turkey. It was held that the rights over the trademark were completely assigned to Coca Cola and Bisleri cannot use the trademark in or outside India.
2) STARBUCKS COFFEE V SARDARBUKSH COFFEE
How many Bucks for coffee?
A funny yet interesting case where the famous Starbucks became the victim of smart minds of Indian Infringers where the man used Sardar instead of Star yet in such a deceptive way and on such a large scale that people were made to believe they belong to the same owner. However, the Court allowed the Defendant the right to use the modified version of the Trademark Sardar Baksh to Sardarji Baksh and also gave Defendant the chance to Defendant to sue the person who uses Baksh in future.
3) Sony Corporation vs. K. Selvamurthy
Sony Corporation filed a trademark infringement suit against a tour and travel business named Sony Tours and Travels. The court ruled in favor of the defendant, stating that the businesses were distinctly different, and consumers weren’t likely to be confused. Moreover, the plaintiff’s delay in taking legal action was noted, resulting in costs awarded to the defendant.
4) Parle Products Pvt. Ltd. v JP & Co
Parle, a biscuit maker, had a trademark for their “Parle’s Glucose Biscuits” wrapper. When they noticed a similar wrapper used by JP & Co in 1961, they took legal action. The Supreme Court decided that despite minor differences, the resemblance was enough to cause confusion, highlighting the importance of avoiding confusion in trademark infringement cases.
5) Vishnudas Trading v. Vazir Sultan Tobacco Co. Ltd.
It involves the use of the ‘CHARMINAR’ trademark for different products. Despite both products being tobacco-related, the court ruled that they were distinct enough to warrant separate trademark registrations.

HOW TO AVOID THE TRADEMARK CASES IN INDIA?

1. Conduct a thorough trademark search.
2. Choose a distinctive mark
3. Understand trademark classification
4. Consult a trademark attorney
5. Register your trademark
6. Monitor trademark use
7. Enforce your trademark right

CONSEQUENCES AND PENALTIES
Civil Consequences:
Injunction: The aggrieved party may seek a court order to restrain the infringer from using the deceptive mark, effectively stopping them from doing business under it.
Damages: The court can order the infringer to compensate the trademark owner for the financial losses incurred due to the infringement. This can include lost profits, damage to brand reputation, and legal expenses.
Accounts of Profits: The court may order the infringer to surrender all profits earned through the use of the infringing mark.
Criminal Consequences:
Imprisonment: The Indian Trade Marks Act of 1999 prescribes imprisonment of up to 3 years for intentionally using a deceptively similar trademark. In case of subsequent offenses, the imprisonment term can be extended to 5 years. Fine: The infringer may be liable to pay a fine of up to Rs. 2 lakhs, which can be extended to Rs. 3 lakhs for subsequent offences.
CONCLUSION
In the competitive Indian market, protecting your brand identity through trademarks is crucial. Deceptively similar trademarks can not only harm your reputation and profits but also lead to legal trouble. Understanding how courts assess similarity through real-life cases and taking proactive steps like thorough searches, distinct mark selection, and legal guidance can help you navigate this complex landscape. Remember, vigilance and proactive measures are key to safeguarding your brand and ensuring its success.
RESOURCES

• Universal’s Intellectual property laws, 2020 (textbook)
• https://www.investopedia.com/terms/t/trademark.asp
• https://www.legalzoom.com/articles/what-is-a-trademark
• https://ipindia.gov.in/hearing-board.htm
• https://www.indiafilings.com/trademark-objection