Trademark In India: A Brief Introduction

A trademark is an intellectual property that is depicted as a visual symbol, label, sign or design in order to represent a product by a manufacturer. It helps customers distinguish the products or services of one company from the rest. The owner of a trademark may be any entity viz an individual, company, partnership, or other groups of persons.

The most important aspect of trademarks is that they appeal only to the eyes. Mostly things that can be represented graphically can be registered as trademarks. Trademarks may also include the shape of goods, their packaging and colour combinations.

Fundamental Concepts Of Trademarks

The primary function of a trademark is to highlight the quality of a product/service to a customer/prospective customer. The trademarks help identify the products of a company. It takes years to create goodwill. A well-identified trademark is the symbol of an assurance made by a company to its customers. It can communicate almost everything about a manufacturer. Trademark include functions like:
(1) Identifying the origin and source for the quality of a product.

(2) Ensures uniform standards in quality

(3) Effectively provides advertisement to the products

(4) Builds goodwill and image for the product.

Legal Protection For Trademarks

A person or an entity that sells products under a trademark gradually gains exclusive rights over the trademark through usage. However, it is advisable for enhanced security to register a trademark under the applicable intellectual property laws in order to prevent competitors from using a particular trademark. Two types of remedies available against violators of unregistered trademarks are Passing Off Actions and Criminal Proceedings which result in suitable punishments.

Civil proceeding against infringement is available only for registered trademarks. This provides remedies like restraint orders, injunctions, damages and account of profits.

Most intellectual properties like copyrights and patents enjoy a limited duration of protection, while trademarks can have virtually an infinite period of protection provided certain conditions are met. For instance, it is important that the trademark should be in use and renewed from time to time. It is also vital to take action against infringers whenever spotted. Trademarks were first registered in Britain in the mid 19th century. It is interesting to note that the earliest registered trademark (Bass breweries, 1846) is still in force today.

Trademark Protection In India

In India, trademarks can be registered under the Trade Marks Act, 1999. The said Act replaced the Trade and Merchandise Marks Act, 1958. The detailed procedure and rules were enacted under the Trade Marks Rules, 2002, in order to implement the various sections of the Act of 1999. The Act is based on three broad concepts of distinctiveness, similarity of marks and similarity of goods.

Detailed Definition And Features

Section 2(1)(zb) of the Trademark Act, 1999, says that a trademark must be a mark which includes a device, heading, brand, label, ticket, signature, word, letter, name, numeral, packaging or combination of colours or any combination of the above attributes.

(2) It must be of the nature of being represented graphically.

(3) It must serve the purpose of distinguishing products of a manufacturer from another.

(4) Shape, colour combination and packaging may be protected as trademarks.

(5) The usage or proposed usage should be in relation to any particular goods or services.

(6) It should be capable of projecting connection of a person/group of persons with manufacture of the goods or provision of services.

(7) Protection may be granted to a trademark through continuous usage or by registration under the Trade Marks Act, 1999.

(8) Trademarks protected through usage is connected to the goodwill of the enterprise which is acquired through continuous usage. On the other hand, protection can be granted under the Act of 1999 for intended usage as well.

The protection given to a trademark registered under the Trademark Act is an action for infringement, whereas a trademark not registered under the Act, but acquired through usage can be protected by an action for ‘passing off’.

Passing off is an act of imitation by a competitor who tries to push cheaper goods into the market by imitating the trademarks of a manufacturer. Such goods are purchased by unsuspecting customers. The spurious nature of the goods may also result in loss of reputation and revenue for a genuine manufacturer. Thus exists the need for protecting trademarks.

Qualities Of A Good Trademark

Any trademark should be easy to remember whether it is a word, or any other feature like colour combination, labels, etc. It should not be too lengthy and complicated to be forgotten easily. It can only be suggestive of the quality of the products, but not descriptive; as it is against the law to include words like pure, excellent,  best, perfect, etc. A good trademark should not be barred under the Trade Marks Act under the Prohibited classes of trademarks.

We recently witnessed an escalation in the trademark war over the colour Purple 2685C between Cadbury and Nestle. When Cadbury had applied for trademark in the colour in 2004, it was published in the Trade Marks Journal of UK in 2008- which was opposed by Nestle. Since then, there have been a number of appeals and hearings which resulted in the rejection of Cadbury’s appeal in registering the hue of purple as a trademark.