Trademarks

Table of contents

Trademarks

A trademark is a mark that is used in trade for goods, services, and entities.

It may be a word, sign, design, sound, or a combination of these. Among the same or similar products or services, the mark should be capable of distinguishing the source of origin of a product or a service.

Collective Marks

A collective mark is used by a guild or association for a collective objective.

It is a mark distinguishing the goods or services of members from those of other undertakings. The mark is owned and regulated by the guild or association.

Certification Mark

A certification mark indicates that the goods and services in connection with which it is used are certified. It is owned by a neutral entity. The certification mark authenticates in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy, or other characteristics of the goods on which it is used. On meeting the certification criteria, the owner grants the license to the users for using the mark.

Background

Before the industrial revolution, the merchants of China and India won almost half of the world trade through knowledge-embedded products.

It can be said that trademarks are ageless and exist from the very beginning of trade and commerce.

Functions of a trademark

  • To enable a buyer to zero-in one’s choice.
  • To uniquely distinguish one’s goods from the same or similar goods of the competitors.
  • To create a decision-making notion in the minds of the buyers.
  • To generate goodwill for the product and thus establishing the product independently in the market.
  • To provides a premium over the average cost of manufacturing and thus the selling price advantage over the competitors.
  • To help the mark with the consistent presence in the market making the mark property of its own.
  • To provide a penal legal remedy for checking the unfair competition, piracy, and counterfeiting practices.

Difference between trademark and Copyright

Different facets of IP are protected through different IP tools. Copyright provides protection to the original expression of thought in a tangible format. Trademark helps a prospective buyer in choosing the product of choice. The trademark designates the source of origin of a product. The trademark establishes a relationship with a prospective buyer.

Difference between Brand and Trademark

The brand is marketing jargon. Trademark is used more on the legal side. These two words represent the same mark for different functions.

Registered and Unregistered Trademarks

Intellectual Property rights are territorial in nature. The trademark registered with due process is known as a registered trademark. The proprietor of a registered trademark holds the right to use the ® symbol with the registered mark. A trademark applicant with the accepted application status may use the TM symbol on their mark.

Territorial Rights

The IP regime is based on the concept of ownership. The segmentation of ownership can be based on territory. Territorial ownership means, a trademark owned in Country A is different from the one owned in Country B.

Once a mark is registered, it provides the monopoly rights to the owner to the exclusion of others.

Passing Off Vs Infringement

The breach of an unregistered trademark is classified as a passing-off. A tort action, a civil action, is the remedy for passing off. The breach of a registered mark is classified as an infringement. The trademark owner can avail of both criminal and civil remedies.

Trademark types

Broadly, trademarks can be divided into the following types.

  • Unregistered or Registered
  • Merchandise marks (both for the legal entity names and for the goods and services), Certification marks, and Collective marks

Trademark Classification

The goods and services have been classified into 45 classes; the first 34 classes are for the Goods and 35 to 45 for the services. A trademark application can be into one class or multiple classes.

The classification is a standard international Nice Classification and is followed in all the World Trade Organisation (WTO) member States.

Registration

A mark can be applied for registration prior to starting a business or a trade. As per Indian law, such registration is good for five years without the business or goods or services for which it was registered.

A mark in use without registration can be applied for registration at any point of time.

Strong Vs Weak Mark

There are absolute and relative grounds in the trademark law that makes a mark weak or strong.

Any mark that is in the common use or knowledge describing the goods or services is a weak mark. A mark that fails to distinctly identify the source of origin, the function of a mark, is also a weak mark. A mark that causes confusion or deception in public is also a weak mark.

Original artwork or a coined word (not in the public domain) is an example of a strong mark.

Life of Trademark

A registered trademark is renewed at intervals of ten years from the date of the trademark application. A trademark in use can be renewed indefinite times at ten-year intervals.