A trademark is any word, name, symbol, or device 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 colors. Trade Mark includes a brand name, a house mark, and a service mark. A trademark may be an insignia, label, name, sign, logo, device, signature, numerals, packaging, shape of goods, color combination etc. In other words, a trademark is a visual symbol used in relation to any goods or services to indicate some kind of trade connection between the goods and services and the person using the mark. It usually identifies the product and acknowledges its unchanged quality and helps to advertise the product. This gives the consumer satisfactory assurance of the quality of the article he is buying. Their duration is not limited and they may last forever, subject to renewals at proper intervals. Priority of right is determined by who first used the mark within the particular geographic area. In those countries, which recognize common law rights, use of a mark commercially must be demonstrated before grant of registration of the mark. If they are not properly used and protected, it becomes difficult to be enforced against misuse.
Brands today are demonstrably the most powerful and sustainable wealth creators in the world. Therefore, a brand’s future needs to address how to be better, stronger, more distinctive and more valued. The definition of a brand is probably more complex today than it has ever been. People have more choice today than they ever had before. So, the brand must be, so to say, a bridge of trust to the consumer. Trust is undoubtedly the future of a brand. A brand has to be customer-friendly. There are many characteristics shared by the strongest brands today, the most critical of which are clarity, consistency and leadership. Around the world, millions of dollars are spent every year in building a strong brand.
A brand is the identity of a product and assures of a pre-sold quality. Corporate image is now a day’s being treated as a brand. It is the net result of interaction of all experiences, interaction of belief and knowledge that people have about the company, and many products have names synonymous with the brand names. A brand thus generates the goodwill of the company also and, therefore, needs to be protected. Goodwill is generated as the business is carried on and is augmented with the passage of time, and it is the mechanical quality of a particular trade, which attracts the customers. Goodwill has become a component of the total value of an undertaking that is attributable to earn profits. Therefore, brand protection becomes inevitable in the present day scenario.
PROTECTION OF TRADEMARKS IN INDIA
Trademarks which are applied to goods and Service marks are applied to services are protectable in India apart from Certification marks, which indicate that particular products or services meet the standards set by the certifier. Well-known marks are also granted protected in India, though most countries protect only trademarks and service marks. India also recognizes trademark rights under the Common law. Such rights are acquired, through use of a trademark in commerce and registration is not mandatory. Common law rights extend to a geographic area, in which the trademark owner carries on his business under his mark in relation to products or services to which the mark is applied.
Priority of right is determined by who first used the mark within a particular geographic area. In countries, like India, which recognize common law rights, use of a mark in commerce has to be proved before registration of the mark can be granted. In those countries that do not recognize common law trademark rights, such rights can be acquired only through registration.
Priority is determined by the filing date of the trademark application. Under the T. M. Act 1999, if a mark/brand is well-known or world famous, it is liable to be protected, irrespective of its use in India.
Under the Indian law, initially, the registration of a trademark remains valid for ten years and thereafter the same can be renewed after every ten years.
Unlike as in many countries, where only use-based applications are allowed to be filed, in India applications for registration can be filed either stating ‘Proposed to be used” or based on the actual date of use. For filing of a proposed-to-use application, as the term itself indicates, the mark need not have been used on the date of the application, but the and, therefore, must commence actual use of the mark in commerce before such an application matures for registration.
Aggarwal Associates has a well-experienced and energetic team of lawyers who deal in the prosecution of Trademarks Applications as well as in litigation. Many world famous brands have been got registered and successfully protected by Aggarwal Associates.
AGGARWAL ASSOCIATES PROVIDES FREE SEARCH REPORTS AND ADVICE ON REGISTERABILITY OF A TRADE MARK TO THEIR CLIENTS
PROTECTION OF WELL KNOWN TRADEMARKS IN INDIA
The Trademarks Act was introduced in India in 1999 and came into effect on 15th September 2003. One of the changes that has been brought about by the Act is that it gives statutory protection to well-known Trademarks which were earlier protected under the Common law.
Before having a look at how the Common law granted protection to well- known trademarks till now, let us first examine the statutory protection conferred by the Act.
Section 11(6) and 11(7) deal with the facts that the Registrar will take into consideration, while determining that the mark is a well-known mark,
- The knowledge or recognition of the alleged well known mark in the relevant section of the public including knowledge obtained as a result of promotion of the trademark
- The duration, extent and geographical area of any use for that trademark.
- The duration, extent and geographical area for any promotion of the trademark including advertising or publicity and presentation at fairs or exhibition of the goods or services in which the trademark appears.
- The duration and geographical area of any registration of any publication for registration of that trademark under this Act to the extent that they reflect the use or recognition of that trademark.
- The record of successful enforcement of the rights in that trademark, in particular the extent to which the trademark has been recognized as a well known trademark by any Court or Registrar under that record.
- The number of actual or potential consumers of the goods or services
- The number of persons involved in the channels of distribution of the goods or services.
- The business circle dealing with the goods and devices to which the trademark applies.
Whereas a trademark has been determined to be well known in at least one relevant section of the public in India by any court or Registrar, the Registrar shall consider that trademark as a well-known trademark for registration under this Act.
In addition to this there are several facts that are not to be taken in to consideration by the Registrar in determining the well-known trademark.
These are as follows:-
- The Trademark has been used in India
- The Trademark has been registered
- The application for registration of the Trademark has been filed in India.
- The trademark is well known in or has been registered in, or in respect of which an application for registration has been filed in any jurisdiction other than India or
- The trademark is well known to the public at large in India
Section 11(10) deals with various aspects in relation to the Protection of well known trademarks. It states:-
While considering an application for registration of a trademark, and opposition filed in respect thereof, the Registrar shall
- Protect a well known trademark against the identical or similar trademark, and
- Take into consideration the bad faith involved either of the applicant or the opponent affecting the rights relating to the trade mark.
However, it is also stated that if a trademark has been registered in good faith disclosing the material information to the Registrar of where right to a trademark has been acquired through use in good faith before the commencement of the Trade Marks Act, 1999, then the validity of the registration of the trademark or right to the use of that trademark will not be prejudiced on the ground that such mark is identical or similar to a well known trademark.
Section 11 of the Trade Marks Act provides for facts to be considered while establishing a well known trademark, protection of a well known trademark and protection of marks registered in good faith viz. a viz. well known trademarks.
PROTECTION OF WELL KNOWN MARKS UNDER COMMON LAW
Several cases have been decided by various High Courts in India in which well known marks were protected. As at that time the Trade and Merchandise Marks Act 1958 did not provide for any provisions under which these marks could be protected, the protection was conferred in them under passing off.
In Daimlor Benz Akietgesellschaft vs. HYBO HINDUSTAN (AIR 94 del 239) , injunction was sought by the manufacturers of the Mercedes Benz Car against the defendants who were using the three pointed star in the circle and the word Benz. Injunction was granted against the defendants who were using the mark Benz on underwear apparel.
In the matter of Kamal trading Co. vs. Gillette UK Limited (1998 IPLR 135) injunction was sought against the defendants who were using the mark 7’O Clock on their toothbrushes. This was further reaffirmed by the Bombay High Court, which held that the plaintiff had acquired an extensive reputation in all over the world including India by using the mark 7 O Clock on razors, shaving creams. The use of an identical mark by the defendant would lead to the customer being deceived.
In Whirlpool Co. & Anr. Vs. NR Dongre1996 PTC 415 The plaintiffs mark was Whirlpool and they had registered the same in India in 1977. However the mark had not been renewed. The Plaintiff’s mark had a worldwide reputation and the defendant was using the mark on Washing Machines. The Plaintiffs had sold machines in a limited number to the US Embassy in India. However they had also advertised in a number of international magazines having circulation in India. The Court held that the mark Whirlpool had established a transborder reputation in India and hence the defendants were injuncted from using the mark Whirlpool for their goods.
In Aktiebolaget Volvo Vs. Volvo Steels Limited 1998 PTC 47 it was held that the plaintiff had established a reputation in India in relation to its mark Volvo. It was advertised in various international magazines having circulation in India and the plaintiff had also registered the mark in India. The defendant had adopted the mark with fraudulent intentions to benefit from the reputation of the Plaintiff.
In Caterpillar Inc.Vs. Jorange and Another 1999 PTC 570 the defendant had started using the marks CAT and CATERPILLAR on their garments. The Plaintiffs trademark CATERPILLAR or CAT was registered in 175 Countries all over the world. It was also registered in India and the registrations were valid and subsisting. The Court while granting the injunction held that the plaintiffs have made out a prima facie having regard to the trans border reputation established by it undoubtedly with regard to heavy duty vehicles all over the world and in several countries even with regard to garments.
Protection of Well known Trademarks by the New Act is in recognition of the more modern concepts of trademark protection. Though the Indian Courts were actively protecting Well-known Trademarks, Statutory protection is a step in the right direction.
INTRODUCTION AND BRIEF HISTORICAL GLIMPSE
In consonance with the TRIPS obligations the Geographical Indications Act 1999 came in to effect on 15th September 2003 in India. The Act has strengthened the protection of Geographical Indications in India and was eagerly awaited.
Before the advent of the TRIPS Agreement there were no multinational or multilateral agreements, which dealt with the protection of Geographical Indications. There were, of course International Treaties, like Paris Convention, Lisbon Agreement, which aimed at protecting Geographical Indications. However, the protection under these Treaties was limited and there were a restricted number of signatory countries, it did not prevent worldwide infringement of various Geographical Indications.
Though the inclusion of Geographical Indications in the TRIPS Agreement was marred by controversy, it heralded its entry in Intellectual Property Law.
TRIPS-Distinction in protection conferred under Article 22 and Article 23
Art. 22.1 of the TRIPS agreement defines Geographical Indication as Indication which identify a good as originating in the territory of a member or a region or locality in that territory to where a given quality, reputation or other characteristic of the good is essentially attributable to the geographical origin.
The difference between Geographical Indication and Trade Mark are that the former indicates the source of the product, meaning the geographical jurisdiction from which the product has originated from and the later is a sign which is used in the course of trade and it distinguishes goods or services of one enterprise from those of other enterprises.
Article 23 provides for additional protection for geographical indication of wines and spirits. This has led to a divide between the countries who are the signatories of the TRIPS Agreement.
India and a host of developing countries argue that as their Geographical Indications are agricultural in nature the additional protection provided by Article 23 should be extended to these products as well.
On the other side of the fence are countries, like Australia, US and many Latin American countries, which oppose the extension of the protection of GIs. India and other developing countries argue that the protection granted by Art. 22 is insufficient in protecting their geographical Indications as the test under this Article is of unfair Competition. Furthermore the burden of proof is on the plaintiff that their Geographical Indication has been infringed.
Article 23 provides a blanket protection to wines and spirits and in cases of infringement there is no onus on the plaintiff to prove Unfair Competition or adduce evidence in relation to the same.
The distinction between the protection offered by Article 22 and Article 23 can be illustrated with the help of an example. If a trader uses the words Darjeeling type tea, or kind, style and imitation on a pack of tea he cannot be held for violating the law as the true origin of the product has been stated on the box. This leads to a case scenario where Geographical Indications can be misappropriated without violating the law.
However under the expansive protection afforded by Article 23 there is a blanket ban on using a false Geographical Indication on any wines or spirits even though the true geographical origin might be mentioned on the product.
The disparity between the protections offered by the two Articles has led India and a host of other countries to doubt the efficacy of the protection afforded to geographical Indication in relation to non alcoholic products in the International Arena.
Geographical Indications Act -1999
The new Act that has been passed will effectively protect various Industrial and Agricultural resources existing in India. Some of the examples involved are Basmati Rice, Alfanso mangoes, Nagpur oranges, Kanchipuram Saris, Darjeeling tea, Pashmina shawls, Agra ka Petha, Bikaneri Bhujia, Malabar Peppers, Khadi and many more.
The Act is also significant because the TRIPS Agreement provides that if the Geographical Indication is not protected in its Country of Origin then it will not be protected in the International arena.
The Registration of the Geographical Indication confers the right of exclusive use coupled with the right to obtain relief in respect to infringement. Any association of persons, producers, organization or authority established by or under the law can apply for the registration of the geographical Indications and if there application is successful there name is entered in the Register as registered Proprietors. For example the Tea Board of India can apply for registration of Darjeeling Tea.
A producer of goods can apply for registration as an authorized user. The registration of an authorized user is valid for a period of 10 years and thereafter it can be renewed for a further period of another ten years. If there is a lapse in renewing the registration it will be removed from the Register.
The Registration of Geographical Indications is not compulsory but it affords better legal protection to facilitate an action for infringement.
The Act prohibits licensing, transmission assignment or pledge in respect of any Geographical Indication.
An action for infringement as well as passing off can be brought under the act. Infringement includes unfair competition. A varied number of relief’s such as Injunction, Discovery of documents delivery up are available.
The new Act will go a long way in imparting the necessary legal certainty in this area of Intellectual Property in India. However on account of the discriminatory protection conferred to non alcoholic Geographical Indications it is a certainty that the Indian Geographical Indications will continue to be exploited commercially in the International arena. Until there is an understanding between the various signatories and Article 23 type of protection is extended to other Geographical Indications it will be impossible for India to protect its Geographical Indications internationally.