Trademark is a type of Intellectual Property Right. A trademark is in the form of a mark, a sign, design, logo, symbol, etc.it helps to distinguish between goods produced by different manufactures. it can be applied on both goods and services. In case of services, trademark is called service marks. Trademark helps in differentiating between two similar kind of goods and services which are not produced by same person. A trademark can be owned by an individual, an entity or even a corporation.

Certain examples of various kinds of Trademark-

• Words and letters- Yahoo, Netflix
• Logos– McDonald’s double arch, Apple Computer’s Apple
• Pictures or drawings– Puma’s Puma, android
• Combination– java, amazon
• Slogans– Just do it (Nike)
• Product shape– Thums Up bottle, Toblerone chocolate.

Functions and utilities of Trademark

The mark provides various utilities to the owner and to the consumer. It helps in identifying the source. Place of origin provides answers to many questions. Who is the producer? Location of the producer? Product producer in which place? Etc. Due to presence of widespread competition in the market. Substitutes are available mostly for every kind of product. Businesses focus on making available in market such goods which are popular among the consumers. They aim in excess production of such goods which satisfy the customer in terms of both price and quality, which would ultimately build customer loyalty towards a product.

Due to availability of similar kinds of products in the market. The main concern is of differentiation. Trademark is the solution to this problem. It helps in identifying disparity between goods produced or services provided by different sources. When the mark becomes popular among the consumers. It becomes a brand.

The mark not only helps in identifying the source but also provides insight into the quality of product and service. People tend to relate quality of product with its source. In some cases, the consumers do not even care about increasing prices of products or services. If they are loyal towards a particular brand, it satisfies them in terms of its usage and quality. They will still buy it at higher price.

Brand loyalty can be understood with the help of an example. A commonly known brand originated in India named Himalaya has positioned itself in the market very well. It aims in providing chemical free products, producing them by using natural or organic means at cheap prices without compromising with quality of items. The consumers who are very sensitive towards products made by natural resources will buy those products even if price changes. This is known as brand loyalty. The products are well marketed under the logo of Himalaya and has been successful in building huge customer base.

Considering the example of services. Mc Donald has set up its outlets in almost every nation. It provides best quality of burgers and French fries. They have many competitors too like burger king. But Mc Donald is successful in building its brand image. People of any country can relate to its source based on its trademark. Irrespective of rising prices of its products. The consumers who are loyal to Mc Donald brand will not switch over to any other similar food service provider.

A trademark owner uses its mark in advertising its products. The advertising can be in any form audio-video means, attachment on hoarding, or through circulation of pamphlets. Advertising aims in publicity of goods and services. If a new product is launched, there is a reduction in price, discounts and offers are available. Through advertisement, this information can reach out to large number of public. The mark helps in differentiating the advertisements of two similar kinds of products or services.

A trademark also symbolizes expression. A consumer can sometimes purchase a product which is not its necessity but to express its feelings through the brand. For example- if an individual is wearing a Calvin Klein watch, it wanted to show off its enthusiasm towards the brand and at the same time wanted to express its wealth. If a person is wearing customized t-shirt of one republic, it expresses its love for music and one republic band.

Nowadays trademark is not dependent on the product or label on which it is attached. But now it has achieved an independent value. If a child wants to purchase a water bottle which is customized as its most loved cartoon character, it does not mean that the child links the product with the manufacture. It is its liking towards the mark of its favorite cartoon character. This can even be called [iv]Merchandising of trademark.

There are certain aspects which are considered as essential for a mark to be considered as trademark. First and Foremost is the trademark can be represented graphically. Otherwise, it is not regarded as a trademark. It should be in such form that it would ease in identifying products and services.  No two marks must be similar in all respects. Trademarks are only applicable for goods and services. For the sake of corporate identity, the mark can be displayed by organizations outside their premises.

Trademark is considered as the asset for the organization to which it belongs. Trademarks can be registered in any of the 45 classes. There are 34 classes for goods and 11 classes for services. Measures must be taken to protect the trademark as there are high risk of infringement. In [v]Glaxo Smith Kline pharmaceuticals Ltd v. Unitech Pharmaceuticals Pvt, ltd, the plaintiff owns a trademark on PHEXIN. It claimed that the defendant is using the similar kind of trademark i.e., FEXIM. The court held that the two marks are similar in phonetic sounds. It is a valid case of infringement Trademark and defendant was ordered to stop using the mark FEXIM. Trademark can be safeguarded against infringement by registering it according to the provisions of IPR act, of a particular nation.

What cannot be registered as a Trademark?

Certain symbols are excluded from being registered as a trademark. They are flags, emblems, royal insignia, rings of Olympic games etc. the marks or signs that are objectional and obscene cannot be registered. The marks which are against the sovereignty and integrity of the country are also excluded from registration by certain nations.

The registration of trademark can be refused by authorities-

• If the mark is not covered under the definition of trademark.
• The trademark lacks any distinguishing character.
• The mark symbolizes the goods and services for which it is registered.
• The mark is the term commonly used in the trade.

Types of Trademark

[vii]A Trademark can be in form of names, slogans, abbreviations, numbers etc. For example – Nokia, 711, Dar kay aage jeet Hai, IBM etc. The shape of the goods packaging, containers can also constitute Trademark. Other kinds of trademarks are logo’s (design), sound marks (tones used in advertisement by companies) some of them are registered as a trademark. E.g.- cries of animals.

Even color marks can be registered as a trademark. The objects, devices, or combinations in color or color combinations are covered under color marks. In case of[viii] Qualitex co. V. Jacobson products co., 115 S. Ct. 1300 (1995), the supreme court in USA held that, green-gold color of a dry-cleaning press pad can be registered as a trademark. There was an argument regarding depletion of colors. But it was set-aside by the court of law.

[ix]Marks related to senses are also a category of Trademark. Olfactory marks which are known as smell marks. If a company produces a paper by adding an attracting fragrance to it. The customer can identify such product by smelling it. It can be registered as a trademark. The smell of fresh cut grass was generated as a trademark for tennis ball in senta aromatics application (1999).

[x]In certain cases, total image of the product serves purposes of trademark. The total image of a product includes size, shape, graphics, logos etc. it is called a trade dress. It is a very wide concept. Many courts have started granting the protection to trade dress in the same way as it is given to trademark. The same was discussed in the case John J. Harland Co. v. Clarke Checks, inc.,711 F.2d 966, 980(11^th Cir. 1983).

Assignment of Trademark

When an owner of a trademark transfers the right to use to other person or group of persons, it is known as assignment. According to section 24(3) of the trademark act 1994 in United Kingdom, a registered trademark must be assigned in writing. The assignment can be partially or fully assigned. The document must include the name of parties contracting i.e., the assignor and the assignee, the amount of consideration paid by the assignee, the effective date of assignment etc.

After the document is executed and contains all the required information of assignment. The parties must inform UK IP office using form TM16. In case of unregistered trademark parties are not required to inform the authorities regarding transfer of trademark.

Passing off or Palming off

Passing off is when an individual sells goods or services in its own name as the goods of another. The plaintiff can file a suit against it, this is called a Passing off case. It was cited in case Perry v. Truefitt (6. Beav.66 (Eng. 1842), that a person cannot trade in its own goods and services imitating that they are goods of another person. Trademark infringement provides protection only to registered products or services. Passing off safeguards unregistered goods or services.

International Treaty

[xiii]Paris convention- It is managed and controlled by the World Intellectual Property Organization (WIPO), based in Switzerland. It provides protection to Intellectual Property including Trademarks of any member state. Any dispute arising due to this convention between two member nations will be settled in International court of justice.

[xiv]Madrid System- Like the Paris convention, Madrid system is also administered by international bureau (WIPO). It provides less compliance in protection of trademarks. There is one procedure and one operation to be followed. The payment of fees is in swiss francs only.

Conclusion         

Trademark is considered very important for the product or service. Due to presence of various benefits, it is a very renowned concept. It is advantageous to both the traders and consumers. Its registration is important to seek protection in court of law. In case of unregistered marks, passing off is an only remedy available. To simplify procedures and allow easy use of trademarks originated in one by another nation. Many nations have signed international treaties to extract various benefits regarding Intellectual Property.

Frequently Asked Questions

What is the importance of trademark?

A trademark is considered as an asset to the organization. It provides security of their brands to startups. It acts as a marketing tool. It helps in distinguishing goods from one producer to another. It helps consumers to connect with the source of the product. Now it has gained an individual value too. For trademarks owner, it is also considered as a means of communication with the consumers.

Why registration is important?

It provides the registered owner to use the mark nationwide. In case of unregistered marks, they can only be used in a particular territory. It provides a right to sue an individual or organization who infringes its mark. It acts as an evidence in legal suites. It provides a recognition to the mark, that it is owned by someone.

What is term and expiry of trademark?

Trademark registration is considered valid for a period of 10 years. It can be renewed before six months of its expiry to another term of 10 years.

What is infringement?

Infringement is violation or breach of a right. When an individual owns a mark. It is registered by him with the IP authorities, if it is used by some other person which is not assigned to use it. This is considered as infringement of trademark. The owner can seek legal help. Injunction is usually awarded by courts in these cases. It could be preliminary or final. If the mark is unregistered the owner has got the remedy of passing off.

Reference

[i] Indira Gandhi National Open University School of Law, Trademarks-I, October 2019

[ii] Bitlaw.com

[iii] Indira Gandhi National Open University School of Law, Trademarks-I, October 2019

[iv] Ibid

[v] Indira Gandhi National Open University School of Law, Trademarks-II, October 2019

[vi] www.mondaq.com

[vii] Indira Gandhi National Open University School of Law, Trademarks-I, October 2019

[viii] Ibid

[ix] Ibid

[x] Ibid

[xi] Southbanklegal.com

[xii] Indira Gandhi National Open University School of Law, Trademarks-II, October 2019

[xiii] Ibid

[xiv] Ibid