PROTECTING BRAND IDENTITY THROUGH TRADEMARKS | woman at work

PROTECTING BRAND IDENTITY THROUGH TRADEMARKS

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India has very strong legacy of using symbols or marks. The symbols are representatives of some meaning, character, function etc. For example, the ancient Hindu symbols like trishula, aum, swastika or tilaka signify some philosophy, teaching or gods/goddesses.

The origin of trademarks dates back to ancient times. Indians had used suvarna mudras with particular symbols on them signifying a particular dynasty. Egyptian craftsmen reproduced predefined marks on their artistic products to associate them with those products. Use of marks is reported in the Middle Ages too. Shiva Rajya Mudra is very famous in the state of Maharashtra. It is an embossed mark that signifies the ownership of the great Shivaji Raje. In the 18th century a need of associating marks with the businesses emerged to avoid counterfeit goods and identify original goods that ultimately resulted in the creation of trademarks. Many countries developed their trademark laws and started offering legal protection to symbols, marks and logos. Generally any business offers either goods or services or both.

A trademark signifies a mark that is associated with a business. An entrepreneur offers his goods or services under one or more brand names. These brands or brand names are protectable by trademarks. Let us understand the connection between a brand and a trademark. A trademark provides legal protection to a brand and the ownership lies with the person who applies for the trademark registration. A trademark is a mark that is capable to distinguish goods and services of one person from those of another person. Registration of a trademark gives exclusive right to the proprietor of the trademark to use the mark to represent his goods and services.

Any person who is proprietor of the mark can apply for trademark protection in India. The trademark protection is limited to a class in which the application is made for protection. There are 45 classes in which known goods and services are classified. The trademark office has classified all of the goods and services in the world in 45 classes. 1-34 classes are in respect of manufacturing and 35-45 are in respect of services. India has adopted 7th edition of classification of goods and services. It is referred as NICE classification of goods and services. Most of the countries of the world follow NICE classification. One has to identify the class of his service and apply in that class for the protection of his mark. One can apply for more than one class also. Sometimes the spread of the services offered ranges in multi classes. So the owner of the mark is advised to file application in those classes. In India, it takes 12-15 months, from a date of filing, to register a trademark. However, in case of objections from examiners or any objection from any interested person or any hearing, it may take up to three years to register a trademark.

Trademark protection is a perpetual right. Initially it is granted for 10 years and one has to renew it before the expiry of the term for which it is in force. If a registered trademark is not renewed before expiry of the mark then it may lose validity. While applying for a trademark the applicant has to provide a statement of use of the trademark under question. A statement of use is a description of the activity carried under a trademark. Such a statement should be made in the trademark application form. Lets look at the features of a good trademark and the highlights of a good application that is accepted by the Registrar of the Trademarks. A

n applicant’s trademark is supposed to be registrable if it is distinctive and it is not conflicting with existing trademarks in the trademark register of the trademark office. Legally there are two types of grounds of refusal of trademarks : absolute grounds and relative grounds. It is to be noted that a good trademark is catchy in appearance. It is original representation of the owner’s goods or services. It is preferably a coined name. It is not inspired from its competitors. A good trademark is not a suggestive mark. It doesn’t indicate its primary use or advantage. It is easy to pronounce and appealing to eye.

It should have ability to distinguish the goods and services it is representation from other competitors. It has generally three or more letters or characters. Generic names are not good trademarks. For example, the brand name Google is a registered trademark of Google Inc. USA. It is derived by diluting the term GOOGOL which means a number equal to 10 to the 100th power. However, many trademarks became so popular that people use them alternatively with the generic word. For example, Google has become an equivalent word of search. A brand, coined name, logo, label, shape of goods, signature, slogan, symbol, smell, sound, three dimensional representations, word etc. can be registered as a trademark. Service is a trademark which is specially used to distinguish services of the proprietor of the mark. A collective mark is a trademark that is used by any organisation/ association or a collective group.

A trademark and trade name might be same, however, it is not a thumb rule. They can be different too. For example: Blackberry is a registered trademark of a Canadian Company Research in Motion (RIM) where the trade-name is RIM. A business name generally used to identify a business associated with it. For example: Rajmal Lakhichand is a business name. Now, lets understand international trademark protection. There is no international trademark as such. However, one can protect the same trademark in desired countries internationally. There are various treaties that promote protection of trademarks crossing the boundaries of countries. For example, OAPI and ARIPO are group of countries in African continent where you can protect a trademark in more than one country by filing a single application for trademark. Similarly, OHIM is a system of harmonisation of trademark rights in European continent. A registered trademark gives an exclusive right to the proprietor of the mark to use that mark for the goods/ service within the country. It allows the owner to prohibit others from an illegal use of the mark in respect of similar goods or services. One of the least known facts about trademarks is that it can be sold, leased, assigned, gifted like any a real estate property

About Author

Anand Mahurkar

Advocate Anand Mahurkar is a techno-legal expert practicing in the field of Intellectual Property (IP) for more than a decade. He is an engineer and a lawyer who has been a brand and innovation consultant and IPR consultant for SMEs and Fortune 500 companies. He has experience of handling matters pertaining to patents, copyrights, trademarks, industrial designs and more for his clients across India, USA, Canada, South Africa, Europe, China and Japan.

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