Significance of trademarks are that they differentiate one brand from another brand and helps the
customer in making purchase decisions. The research paper aims to provide a detailed
comprehensive analysis of trademark protection of brands. By examining the registration process
of trademark, cases related to trademark protection, this study highlights the significance of
trademarks and how brands trademark can be protected at national and international level. The
research paper also discusses the limitation of trademark under the trademark law.
Keywords
Trademark Protection, Trademark, Brand, Infringement, protection, legal.
Introduction
Trademark is a type of intellectual authority consisting of a recognizable sign, design or
expression that identifier product or services from a particular source and distinguish it from
others. Trademark play a crucial role in protecting the identities of a brand and building
consumer or customer trust in the brand.
A legal framework is provided through trademark laws which gives exclusive rights to the owner
and offers mechanism for enforcing those rights against infringement. This research paper aims
to provide details about trademark protection of brands, case study related to trademarks and
provide information about that how a trademark of a brand can be registered and protected. This
research aims to provide overview of Trademarks and brand protection so the marketers can gain
a good knowledge of how it broadly works and how it is governed.
Research Methodology
This research paper utilizes quantitative research approach and descriptive research approach
about the trademark protection of brands. Secondary sources of data have been used in order to
conduct research with the sources. Government survey reports, articles, research paper and the
cases of Supreme Court and High Court and the information about relevant topic from trademark
act, 1999 and other digital sources were used to gather the information related to the topic of this
research paper. Proper analysis of trademark protection has been made with the respect to
trademark laws in India.
Review of Literature
The information of this research paper has been gathered from various primary and secondary
sources of information. The primary source is the statue itself and the other legislation which
govern trademark and the secondary sources are the various news reports, web information
which is used to provide information about trademark protection. The cases of Supreme Court
and High Court about trademark protection of brands are also included in this research paper
which have greatly influenced the research paper.
How to Register a trademark
The steps to register a trademark varies from country to country but there is a similar pattern
followed:
- Application: A completed trademark application form along with the required fees needs
to be submitted. The entire process is done online as the forms are available online. The
application includes the list of the goods and services to which the trademark will apply.
A proof of use is required to see that your business intends to use the trademark. - Examination: The examination of application is done by the office to make sure it
complies with the formalities. - Publication: Often the trademark is published with the Journal, in many countries when
trademark is registered then only it is published. - Opposition: A period is provided by the office in which others can oppose the trademark
registration. The proceedings of the opposition can be pre-grant or post grant. This
decision will usually be subject to appeal. - Registration: Once it has been determined than there are no chance of refusal, the
registration certificate of the trademark is issued. The validation of certificate is generally
for 10 years. When the renewal fee is paid then the registration is renewed.
Trademark Symbols
A trademark symbols used to identify item of intellectual property. Three commonly used
symbols are –
“®” – This is the registered trademark symbol. It can only be used when it has been registered
with national intellectual property office (IPO).
TM –The trademark symbol which is used to denote ownership of a service which is not
registered.
SM – The service mark symbol which is used to denote ownership of a service which is not
registered.
How can the trademark of a brand protected
Trademarks are protected by the intellectual property rights.
At national levels- The trademark protection is achieved through registration and by filing an
application and paying the required amount of fees.
At international level – At this level two options are there –
● Seeking protection from every trademark office in the country by filing the trademark
application.
Use of WIPO (World Intellectual Property Organization) Madrid system. It is the cost-effective
solution for registering and managing trademarks worldwide. By filing a single international
trademark application and by paying a required amount of fees you can apply trademark
protection in upto 130 countries.
WIPO (World Intellectual Property Organization)
The authority which is responsible for the trademark protection of brand is called WIPO. It is a
specialized United Nations agency which is operating the world’s major and most of the smaller
economies.
The mission of World Intellectual Property Organization is to lead the development of a
balanced and effective international IP system. The Procedures and governing bodies are set out
in the WIPO (World Intellectual Property Organization) convention which established in 1967.
The functions of WIPO are:
● Applications of trademark
● Applications of patent
● Providing advice of Intellectual property law
● Development of Global policy
● Building infrastructure and IP services
Need of Trademark Protection of brands
The protection of trademark offer brand is essential for many reasons as they serve to
protect the intellectual property and the brands image in this world of competition.
- Consumer Trust – A strong brand build over a period of time gains the
customers trust and loyalty and is it is very important to protect the brand and the
trademark ensures that the customers are engaging and enhancing themselves
through product and services of the brand. - Preventing Confusion – when your brands trademark is being registered and
protected the competitors cannot mislead the consumers. - Brand value – Trademark protection of brand give them long term value of your
business. Investors, shareholders are more inclined towards a brand who have its
trademark registered. - Legal Recourse – In case of infringement the registered trademark serves as
legal recourse. If your trademark has been used by another party without
permission you hold a legal right to take action and file a suit in the court. - Global Expansion – if the business expands globally, it’s important to maintain
consistency and protect against the unauthorized fraud in foreign markets. - Online presence- Trademark protection strategies of brand are available on
online platform guarding the brand against cyber-attacks and identity theft of
brand.
Trademark Protection
Trademarks are governed by The Trademark act ,1999 by this act the owner is granted
exclusive rights for the trademark that are being registered.
However, the legal protection granted to the registered trademark is more as compared to
the unregistered trademark. The unregistered trademark has limited protection. The legal
protection is of registered and unregistered are discussed below:
Legal Protection for Registered Trademark:
The trademark act protects a registered trademark owner from any kind of
infringement or damage of reputation by another entity. A trademark
infringement means that there is an unauthorized usage of the mark which is not
registered by some other person.
In such cases the owner of the trademark can take legal action against the person
who used the mark unauthorized and can file a suit against the person. A
registered trademark provides some benefits which are not available for
unregistered trademarks: –
● It helps to protect other people from usage of the trademark unlawfully.
● When there is some infringement, it allows the owner to take legal action
and file the suit against the unauthorized user.
● Statutory protection provided.
Legal Protection for Unregistered Trademark:
In India, there is a common law which protects passing of for unregistered trademarks that are in
use. The owner of the unregistered trademark can file a suit on the person who is using the
trademark of his brand.
There are several judicial decisions which provide that the use of unregistered trademark by a
third party means misrepresentation made by a person in course of trade of another person
which-
● Seems to injure the business of the owner
● Causes an actual damage to the goodwill of the owner.
Legal protection against the false usage of trademark:
The trademark protection act also provide legal protection to registered and unregistered
trademark owner against any person who:
● Politicize the trademark
● Without taking permission from the owner, uses the trademark to goods or services
● Sales or hires for sales of goods to which any false trademark is applied
The following punishment are awarded by the court of the above-mentioned offenses
● The person will be imprisoned for six months and this imprisonment can also extend to
three years
● The person has to pay the fine of rupees 50,000 which may extend to rupees 2,00,000.
Trademark Limitation under the Trademark Law
- Functionality: an individual can protect certain things with the registration of trademark.
Any factors whose functionality increase does not get security. It implies the product
should be nonfunctional.
For example, a particular shape of scale/ ruler can be which is used as stationary item
can be trademarked. The shape improves or enhances the usability of this scale which
would likely run into trouble when it comes to registered trademark.
The functionality rule says that it cannot protect a feature of a article, by depending on its
design it may be eligible for patent or copyright protection. - Geographical Trademark Limitation: It is also known as territorial limitation. It’s one
of the major characteristics is that it is limited to a specific area of a given country.
For example, European Union is a community trademark which is just registered with
the office for harmonizing international market.
However, if a trademark is registered in United States, it will only be used in United
States only a registered USPTO
[1]
trademark grant National trademark rights. - Fair Use Limitation: This doctrine of fair use is applied to trademark law. It is used so
that the owner whose trademark is used in a different context, so then he cannot claim it.
For example: If a car repair shop says that they can repair Lamborghini cars. This is
called nominative fair use.
Under Trademark law [2]
in order to claim the defense of nominative fair use, the user
must establish that it is crucial for him/her to use the registered mark to identify the
product in the market.
- Import Limitation: When goods are sold with different packaging and pricing in
different countries.
For example: If someone buy your product in European Union, imports them to US and
then resells them there for less money, you probably cannot use your trademark law to
fight it. However, if the goods are being imported from a country where the goods are not
trademarked, then the trademark owner may be able to block the import.
Trademark Infringement is on the rise
“81% of the companies affected by trademark infringement in 2018; nearly 10% more
than in 2017”
ON 30 JANUARY, 2019 in BOSTON, MA
From 10 companies eight companies have experienced trademark infringement in
2018, which was up from 74% in 2017. This date is from the latest research from
Compu Mark, which leads the industry in trademark research and protection. 40%
of respondents have experienced 1 – 10 cases of infringement while 22% have
experienced 11 – 20.
The consequences of trademark infringement are customer confusion, damage to
brand reputation and reduction in loyalty and trust of the customer. Almost three
quarter of companies took legal action on trademark infringement and 30% of the
companies had to change a brand name due to the trademark infringement.
Respondent have experienced infringement including industrial design, social
media name, business name, the web domains, advertising campaigns and online
marketplace.
“The trademark filing landscape Is quickly evolving and the trademark
professionals and brands need to adapt in order to ensure that they are able to
effectively mitigate the risk presented by potential infringement. The report shows
that both trademark filing activity and infringement are on the rise, highlighting
the need for increased efficiency and vigilance when it comes to both researching
new trademarks and protecting existing ones”, says Jeff Roy, president, Compu
Mark.
Compu Mark’s research commissioned investigated the state of trademark
ecosystem by surveying 352 trademark professionals across the USA, UK,
Germany, Italy and France.
Through this study it was revealed that technology was identified as the main
element that can make the trademark research and protection process smooth,
which was said by 59% of the respondents.
in addition, 1/3 of respondents had seen an increase in non-traditional mark filings
such as those for smell, ocean, and color.
“It is shown in the research that the technology has the bigger role in supporting
trademark professionals in the trademark filing process when it comes to
trademark protection. And this will be increasingly important as the trademark
ecosystem evolves and grow and the challenges are continuously faced by
trademark professionals around getting to market quickly, lack of time, budget
issues and rising thread of doing business globally. For trademark professional
support Compu Mark is committed to delivering new products and enhancement.”
The global perspective on filing, infringement and challenges is the third annual
report which was made by Compu Mark.
Legal cases that protect Brands from trademark infringement
- “[3]Yahoo! Inc v. Akash Arora: A landmark cyber-squatting case in India”
In the landmark case, Yahoo! Inc confronted a significant trademark infringement
issue, making one of India’s earliest and most notable instances of cyber-squatting.
In this case Yahoo! Inc is the plaintiff which held the ownership of the trademark
‘Yahoo’ and ‘yahoo.com’ as the domain name. This company was globally
recognized.
Despite it’s global recognition Yahoo have not registered its trademark in India. And
the defendant Akash Arora, started offering similar services using the domain name
‘yahooindia.com’.
The court held Akash Arora liable for trademark infringement. This decision
underscored that why practicing a famous trademark and domain names are important
from misleading use, which resulted in setting of online brand protection in India.
- “[4]Apple Corps V. Apple Computers”
This case involved the dispute between The Beatles Apple Corps v. Apple Inc for the
word “Apple”, Apple Inc purchased the Apple Corps trademark rights and licensing
them back, which demonstrated trademark disputes between large industries. - “[5]Louis Vuitton V. Louis Vuiton Dak”
This is the case of international infringement of trademark. In this the plaintiff, Louis
Vuitton won against South Korean Friend Chicken restaurant name Louis Vuiton
Dak. The court ruled that the name and logo of the restaurant were very similar to
Louis Vuitton. - “
[6]Adidas V. Forever21”
The plaintiff, Adidas filed the case against the defendant Forever21, alleging that the
retailer’s product with a “three stripes” design constituted “counter feit product”. This
case tells us about the importance of distinctive design elements in a brand’s identity.
- “
[7] The Coca Cola Company V. Bisleri International Pvt Ltd”
In this case the defendant bisleri souls its intellectual property rights to five other
brands called thumbs up, Limca, gold spot, etcetera and Mazza. This includes
trademark, formulation rights goodwill and know how.
In 2008, the defendant company filed for registration of the mark Mazza in Turkey
and started exporting fruit drink under the name Mazza. The court granted an interim
injunction against the defendant bisleri from using the trademark Mazza in India as
well As for export, which was infringement of trademark. - “[8]Milmet Oftho Industries & Ors. V. Allergan Inc”
The trademark protection was granted to a well-known foreign brand by Supreme
Court. The court restrained and Indian company from using the mark OCUFLOX.
The judgment was given irrespective of the fact that it was not registered and used in
India. It does not matter if the respondent has not used the trademark in India if they
entered first in the world market.
Suggestions for Trademark Protection of brands
Register Trademark in all market: – After your trademark is registered, you need to
protect the trademark from infringement. The registration of trademark ensures that
nobody else uses the trademark. If your trademark is not registered then the people
may mix your brand with some other brand. In today’s digital era it is very important
to get your social media handles registered. Potential customers before buying the
product or services visit your social media pages.
Domain Management: – After your trademark is selected the next step is to file an
application. Advises you to secure your domain names with all the name variation of
the brand. It is necessary that the name of your domain matches with the trademark.
Developing domain strategies are crucial step that are required to take by brand to
protect registered trademarks.
Shutting Down Similar Domain: – once you have registered your trademark the next
step is that you need to ensure that there is no other domain similar to yours that is
owned by someone else since you possess the legal right of the trademark you can
take legal action and if you want to possess the legal right then you need to have the
trademark registered.
Monitoring against infringement: – trademark infringement poses many problems
of branch as it strips them of their right to control their brand and their brand
reputation. Someone sometimes be using your mark or similar to your mark in their
social media and you only have to find out such unregistered infringements and take
legal action against them because it can result in less sales and can even spoil your
brands reputation.
Maintain your Trademark Registrations: – after correctly registering and taking
down the domain of unregistered trademark you need to maintain your trademark
registration which ensures that your trademark will remain yours and cannot be
misused by someone else. Failure to file these documents are can result in the
cancellation of your trademark registration.
Conclusion
In conclusion the role of labels which are also called as trademark in brand protection
strategies both pivotal and multifaceted.
Trademark are not just the tools which are used legally but they are the embodiment
which helps in making brand identity and help in communicating the brand value to
the customers which help in building customers trust and loyalty and keeps the brand
in competitive market space.
In this dynamic and challenging world of business the companies first line of defense
are the trademarks which provide the legal framework of action if there is some kind
of infringement or misuse of trademark.
[1] United States Patent and Trademark Office
[2] Section 30(2)(d) of Trademark Act,1999
[3] Yahoo! Inc V. Akash Arora & Anr 1999 IIAD Delhi 229,78(1999) DLT 285
[4] Apple Corps V. Apple Computers [2004] EWHC768(Ch) England and Wales High Court
[5] Louis Vuitton V. Louis Vuiton Dak (2010)
[6] Adidas V. Forever21 JU 415 US District Court District of Oregon
[7] The Coca Cola Company V. Bisleri International Pvt Ltd (2009) 164 DLT 59
[8] Milmet Oftho Industries & Ors V. Allergan Inc 2004(12) SCC 624
Aadika Jain
Law College Dehradun, Uttaranchal University