Selection and protection of a trademark – Trademark Registration in Cochin

Definition of trademark:

The new definition of the expression “trademark” is – It means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include a shape of goods, their packaging, and a combination of colors. The selection of expression trademark is used to refer to marks used in relation to goods or services or both. The law contains the definition of goods and a comprehensive definition of the expression “Services”.

The words “capable of distinguishing the goods or services of one person from those of others” would seem to convey the same import and effect, which prevailed for registration of marks in part B of the register under the 1958 act. The test of registrability under the new act would thus be less onerous and be similar to the requirement prescribed for part B registration under the old act.

Selection of trademark – a property:

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A sign or mark once adopted and used in relation to goods or services is recognized universally as an intangible industrial property. Just as any other property, it is capable of being assigned or transmitted. Registration supplements and evidence the right in the mark acquired by use or by registration of a mark proposed to be used. In course of time, by use of the mark in relation to goods or service, it may become an invaluable business asset of the enterprise. Adequate care has to be taken in the beginning stage of a selection and adoption of a sign or mark as a trademark. Selection of a proper mark is a mandatory one to obtain the best results.

After initial selection of mark, an applicant will be well advised to do a market research or survey to ensure that no mark similar to the proposed mark is in use in the market for identical or related goods/services; and in particular check with the trade association for the relevant trade and through the official records of the trademarks registry. The law provides for an official search report to be obtained on request together with payment of the prescribed fee.

Apart from this, as a further safeguard, the applicant himself or through his attorney can conduct a search about prior registrations or pending applications; As the records in the trademarks registry are not likely to be up-to-date at any point at any time and as there may be unregistered marks in actual use, the market research becomes an important aspect. Depending upon the scale of business and the status, the applicant may extend his search to cover the use of similar signs or mark even in the respect of unrelated goods/services or as trade or business names. After completing the various process involved in the selection and being satisfied with the availability of the mark, the applicant will have to start using the mark in relation to the relevant goods/services, as he files his application for its statutory registration. Before the process of protection, selection plays a huge role in your brand.

Protection of proprietary right:

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There can be no right of exclusive ownership of any symbols or marks universally in abstract, which constitute a trademark apart from the use or application of them in relation to goods or services; and the word “trademark” is a designation of these marks or symbols as and when applied to a vendible commodity and the exclusive right to make such use or application is called property.

In a well-known and frequently cited passage in bureberrys v. J.C.Cording &Co.Ltd., PARKER J., said: “On the other hand, apart from the law as to trademarks, no one can claim monopoly rights in the use of a word or name. On the other hand, no one is entitled by the use of any word or name, or indeed in any; another way, to represent his goods as being the goods of another to that other’s injury. If an injunction is granted restraining the use of a word or name, it is no doubt granted to protect the property, but the property, to protect which it is granted, is not property in the word or name, but property in the trade or goodwill which will be injured by its use.

This protection afforded to the user of a trademark by way of the tort of passing off crystalized into the recognition of the trademarks as a property belonging to the trader who had so used it that, in the minds of the purchasing public, it distinguished the goods to which he attached it from the goods to which it was not attached. AS Justice HOLMES put in Dupont v.Masland.

The word property as applied to trademarks is an unanalyzed expression of certain secondary consequences of the primary fact that the law makes some rudimentary requirements of good faith.

As was held in consolidated goods v.Brandon: A trader acquires a right of property in a distinctive mark merely by using it upon or in connection with the goods irrespective of the length of such user and the extent of his trade. The trader who adopts such a mark is entitled to protection directly the article having assumed a vendible character is launched upon the market.

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In the same case, it was also held that registration under the statute does not confer any new right to the mark claimed or any greater right than what already existed at common law at equity without registration. Registration itself does not create a trademark. The trademark exists independently of the registration which merely affords further protection under the statute. when we see the observations in Phurva lama v.ITC Ltd, it is clear that it would not be correct to say that registration doesn’t create any rights nor be correct to say that the registration never creates a mark.

At common law, before a person could acquire a proprietary right in a trademark, use of that mark for some time was essential. However, under section 18 of the act, an application for registration of a trademark can be made even by a person who proposes to use it. It was also clarified that registration gives the proprietor an exclusive right to use the mark in connection with goods in respect of which it is registered and if there is an invasion of this right by other person using the same or deceptively similar mark he can protect his trademark by an action for infringement in which he can obtain an injunction, damages or an account of profits.

For this kind of action, registration is prima facie evidence of its validity. This is how the process of selection and protection been carried out.

Paris convention regards it as “industrial property”:

Article 1(2) of the Paris convention provides: The protection of industrial property has as its object patents, utility models, industrial designs, trademarks, service marks, trade names, indications of source or appellations of origin, and the repression of unfair competition. Such protection is based on acquired industrial property right.

Prohibition of certain acts as unfair competition:

Protection of trademark and repression of unfair competition is an important obligation on the member states of the convention. Article 10 bis define acts of unfair competition as including at least those acts of competition which are contrary to honest practices in industrial or commercial matters. The member states of the convention are bound to assure to persons entitled to the benefit from the convention effective protection against unfair competition. The article refers to the following typical acts as unfair competition and which are to be prohibited:

  • All acts of such a nature as to create confusion by any means whatever with the establishment, the goods or the industrial or commercial activities, of a competitor, The act cover not only the use of identical or similar mark or names, which could be attacked as an infringement of proprietary rights but also the use of other means which can create confusion. Such could be the form of packages, the get-up or style used on products and on their corresponding outlets or points of distribution, titles of publicity etc.
  • False allegations in the course of trade of such a nature as to discredit the establishment, the goods or the industrial or commercial activities, of a competitor, these would cover cases of discrediting allegations, which are not strictly untrue.
  • Indications or allegations the use of which in the course of trade is liable to mislead the public as to nature, the manufacturing process, the characteristics, the suitability for their purpose, or the quantity, of the goods. This provision is concerned with the interests and well-being of the public and is important in the context of consumer protection.

Registrability of marks – legislative approach:

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The legislative intent regarding the registrability of marks is to be gathered from the combined reading of the preamble, a definition of trademark, mark and section 9,11, 12, 13 and 14. The definition of mark and trademark are quite comprehensive. To constitute a trademark, it should be both-

  • A mark capable of being represented graphically; and
  • Capable of distinguishing the goods or services of one person from those of others.

The definition of mark and trademarks are intended to be interpreted broadly. It does not, for example, exclude the possibility of even sounds being considered a trademark, provided they are represented graphically and meets the stipulations of capacity to distinguish. The definition would appear to exclude only smell marks which may not be capable of graphic representation for the purpose of being put on the register of a trademark. However, graphic representation of hologram marks on a paper form may satisfy the definition of a trademark.

Article 2 of the trademark law treaty makes the treaty applicable to marks consisting of visible signs and explicitly declares that it shall not apply to hologram marks and to marks not consisting of visible signs, in particular, sound marks and or olfactory marks.

The TRIPS agreement mandates that any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark.

It will be relevant to state Britain’s approach in this matter as spelled out in the white paper on the reform of trademark law (1990).

The test for registrability under the new law will, in general, be similar to that which applies at present to registration in part B of the register. A mark will have to be capable of distinguishing the goods or services of its proprietor. In some respects, however, the test will be eased. At present, it is possible for it to be established beyond doubt that a particular trademark is distinctive in fact and yet for it to be held in law to be not capable of distinguishing. Examples are geographical names and laudatory epithets. This position has been described as unattractive, but the registry and the courts have considered themselves bound by a long history of case law, much of it dating from a period in which trading conditions were very different selection from today. The government intends to take the opportunity offered by the new law to clarify the position so that any trademark which is demonstrated to be distinctive in fact will, in future, be regarded as distinctive in law and therefore, registrable. In some cases, of course, the applicant may have an uphill task in demonstrating, for example, that a common word or name has become distinctive of his goods or services in the mind of the purchasing public, but if he succeeds, and then he will be entitled to protect his mark by registration.

The trademarks act, 1999 also proceeds on the same lines to keep the substantive law in harmony with the international trend.

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