What’s in a Name? It’s a Trademark!

Trademark is essentially another word for brand or brand name. A trademark can be any name, word, symbol, slogan or device that serves to both identify and distinguish a business or product from others in the market. Once you have trademarked your business, if someone else makes an attempt to use something similar enough to confuse customers, you have the right to legally protect yourself and stop the other party.

A rose by any other name would smell as sweet," is a popular reference to William Shakespeare's play Romeo and Juliet, in which Juliet seems to argue that it does not matter that Romeo is from her rival's house of Montague, that is, that he is named "Montague." The reference is often used to imply that the names of things do not aff ect what they really are. In today’s world, you cannot exercise the liberty to adopt or to copy the already registered trademarks, trade names, brand names and domain names. Why it is so important to have your own identity? Why it is so important to have your own trademark. So as to understand the importance of the trademarks in today’s world, we need to understand need and emergence, functions and administration of trademarks. Let’s discuss all fundamental and essential points pertaining to trademark administration.

The Importance of Trademarks in Business

Trademark is essentially another word for brand or brand name. A trademark can be any name, word, symbol, slogan or device that serves to both identify and distinguish a business or product from others in the market. Once you have trademarked your business, if someone else makes an attempt to use something similar enough to confuse customers, you have the right to legally protect yourself and stop the other party.

Need and emergence of ‘Trademarks Law’

 

The marks associated with goods come to acquire a reputation and goodwill around them. Before the enactment of the Trademarks Law, the trademarks used to be called common law marks. The common law marks could not be registered as there is no law under which it could be done. The owner of a common law mark had to protect his mark against acts of infringement or passing off of his mark by initiating common law proceedings. Such proceedings had to be set in motion each time an infringement occurred. Also, such proceedings are eff ective when there is an actual infringement. These proceedings are time taking and onerous hence there was need for a special legislation.

Legislative history

Before the trademark was recognized by statutory enactments, the court of equity granted it reasonable protection. The trade mark owners fi led suits complaining about infringement. They were entertained by Equity courts which granted appropriate reliefs. In India, a trademark owner had a common law rights of action to seek injunction restraining the use of his trade mark by the defendant in a manner calculated to pass off the defendant’s goods as those of the plaintiff .

For the fi rst statutory protection prior to independence of India was given to trade mark through the Trade Marks Act, 1940. This act was based on the Trade Marks Act, 1938 of England. The Trademarks Act, 1940 introduced a machinery for registration and for providing statutory protection to trade marks. This was repealed and a new statute the Trade and Merchandise Marks Act, 1958 was enacted. This in turn was repealed by the present statute the Trademarks Act, 1999 which came into force with effect from 15th of September, 2003.

What is mean by Trademark?

It is a mark which can be represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours.

What is mean by Mark?

Mark includes a device, brand, heading, label, ticket, name, signature, word, letter, shape of goods, packaging or combination of colours numeral shape of goods, packaging or combination of colours or any combination.

A trade mark is a visual representation attached to goods for the purpose of indicating their trade origin. It is important to understand the functions of trademarks before making an application for registration.

  1. Trademark identifi es the product and its origin – for example, the trademark ‘Brooke Bond’ identifi es tea originating from the Company manufacturing tea and marketing it under that mark.
  2. Trademark guarantees its quality – every trademark or a brand name is assuring you the standard of quality. In that business segment trademark creates its own identity and goodwill.
  3. It creates an image of the product in the minds of the public, particularly consumers or the prospective consumers of such goods. The mark ‘M’ which stands for the food items originating from the American fast food chain McDonalds creates an image and reputation for food items off ered by it for sale in the market.
  4. It creates an image of the product in the minds of the public, particularly consumers or the prospective consumers of such goods. The mark ‘M’ which stands for the food items originating from the American fast food chain McDonalds creates an image and reputation for food items off ered by it for sale in the market.
  5. Trademarks are the most effi cient commercial communication tool ever devised to:
    1. ‘cut through the clutter’;
    2. capture the consumer's attention; and
    3. make your products/services stand out

Essentials of trademark: Simplifying trademark selection process

  1. A trademark is considered as good when it is distinctive, it should be easy to identify a trademark from other trademarks.
  2. The trademark should preferably be an invented word. In fact, the best trademarks are invested words.
  3. The trademark, if a word or name should be easy to pronounce and remember. For instance – ‘Bata’ for shoes, Zen for Car, Sony for electronics, Ford for Car etc.

Is the registration of trademark compulsory?

And the answer is YES, if at all the brand owner is intending to take benefi ts of the provisions under trademark protection he has to fi le the trademark for Registration. Unregistered trademarks shall be treated under Passing Off actions and not enjoy the same protection as laid down for registered trademarks.

Few case studies

The plaintiff Bata Company fi led a suit for permanent injunction against the defendants who were using the word ‘Bata’ as ‘Batafoam’. The name ‘Bata’ was registered under the Trademarks Act, 1940, in respect of canvas, rubber and leather shoes, rubber foot wear, etc. It was held that the plaintiff had a cause of action for instituting the proceedings for passing-off . The plaintiff made out a case of issuance of an interim order of injunction in respect of the user of the name ‘Bata’ on any of the products by the defendants.

The respondent was the registered proprietor of trademark ‘Chabi’ with the device of key in respect of all kinds of toilet soaps, lime juice, glycerin soaps and other toilet preparations since 1942. The appellant sought registration of trade mark ‘Chabi’ in Devanagari script in respect of washing soaps claiming user of the mark since 1978.It was held that the respondent having registered proprietorship of a mark identical to impugned mark since 1942, the appellant cannot claim proprietorship of its mark and appellant having known the existence of respondent’s mark in the market, its adoption of identical mark cannot be termed bona fi de and therefore the benefi t of honest concurrent use also cannot be claimed

The application was made for registration of trademark ‘Volmax’. The opposition was made by owner of Trademark ‘Voltas’, ‘Volfruit’ and ‘Volfarm’ which were used for a range of goods from air-conditioners to truck, transformers, pharmaceutical and consumer products. It was found that both marks had not much diff erence when viewed from the perception of common man and there was likelihood of confusion in the mind of consumer.The order of Registrar rejecting the application was affi rmed.

  1. Bata India Limited Vs. Pyare Lal and Co. Meerut City AIR 1985
  2. Ram Gopal Soap Factory Vs. Godrej Soaps Ltd. (2006)
  3. Glaxo Group Ltd. Vs Voltas Ltd. (2006)