Trademarks: An Overview

Trademarks are an important component of Intellectual Property Law, the law that protects the various creations of mind and rewards creators for their creations. One such IP law is the trademark law that protects names, symbols, designs and phrases associated with a business or enterprise. This article will delve into the basics of trademarks and trademark laws in India.

I. Introduction

Intellectual property is the name given to the creations of the mind, such as literary and artistic works, inventions, designs, symbols, names, images, formulas, strategies, etc. [1] Intellectual property, very broadly, means the legal rights which result from intellectual activity in the industrial, scientific, literary and artistic fields.

Intellectual property laws aim to protect precisely these intellectual properties. Countries enact these IP laws to give legal expression to the moral and economic rights of creators in their creations. It is also done to promote creativity as well as innovation and the result of this innovation is to encourage fair trading which would contribute to economic and social development [2]. In this way, intellectual property laws safeguard the rights of the creators and help them benefit financially from their creations by granting them time-limited rights in the said creation.

Intellectual property is protected in law through patents, copyright, industrial designs and integrated circuit, geographical indications and trademarks.

II. Definitions

While it may seem so, but the concept of intellectual property is not a modern creation. Lamps, clay pots and bricks discovered from antiquity have often been found to bear stamps and marks for the purpose of identification. As long as 3,000 years ago, Indian craftsmen used to engrave their signatures on their artistic creations before sending them to Iran. However, the advent of science and technology definitely made things more institutionalised. With the expansion of trade and commerce, an increasing need was felt to protect the rights of creators, lest they be made bereft of the fruit of their creativity and innovation.

One such law for the protection of words, phrases, symbols or designs that distinguish a particular brand in comparison to others, is the trademark law. Put simply:

“A trademark is any sign that individualizes the goods of a given enterprise and distinguishes them from the goods of its competitors.”

Or in other words:

“A trademark is a distinctive sign or an indicator used by an individual or an organization and is applied to the articles of commerce so as to identify the products of one trader from those of another.” [3]

The protection of registered trademarks in the traditional legal regime of trademarks is based on the confusion theory. This theory holds that for the purpose of protecting consumers from confusing the source of commodities, trademarks used on commodities are required to reflect the source of the commodities-producers and that without prior permission of trademark registrants, no person may use any trademark identical or similar to registered trademarks on the same or similar commodities.

III. The Functions of Trademark Law

Looked at carefully, this definition comprises the functional aspects of the trademark. First, that in individualizing a given product, the trademark informs the customer of its source. This does not imply that the customer is made aware of the actual person who manufactured the product, but it simply means that the consumer can trust the business/undertaking, as being the one responsible for selling the product. [4]

The product is not lost in a sea of millions of other similar products anymore, now it has a distinct identity that can be traced to a particular business/enterprise owing to its trademark. Secondly, a trademark distinguishes the goods of a given business/undertaking/enterprise from those of other business/undertaking/enterprise. Looking at both the functions of a trademark, it is clear that both of these functions are interdependent and cannot be looked at separately from each other.

Apart from the ones mentioned above, there are other functions of a trademark as well.

By clearly individualizing a product, a trademark allows customers to easily find a particular enterprise. Customers tend to become loyal to a particular brand, and here it is that the trademark helps businesses to cash in on their goodwill. By specifying the source of a product, trademark allows the customers in easily identifying the products a particular brand, and helps to expand the reach of the business. [5]

Trademark allows your brand to easily communicate with the customers. Trademark allows the product of a particular enterprise to cut through the clamour and noise of multiple products/offerings and helps your product shine.

Taking from the point of goodwill, once an enterprise has generated enough goodwill over the years, it becomes easier for the enterprise to promote its new products with the help of a trademark. If an enterprise already has a loyal customer base, then these customers would be more comfortable to try a new product from that enterprise than to trust and invest money in a completely new enterprise. [6]

Also, a trademark advertises the product and protects the user and/or purchaser from confusion and deception by identifying the source or origin of particular goods and services and distinguishes them from other similar products. [7]

Given the importance of trademark for businesses and enterprise, it is no surprise that almost all the countries give statutory protection to trademarks.

IV. Trademark Protection in India

India enacted its first statute on trademarks in the 1940 – The Trade and Merchandise Marks Act 1940. This statute was later replaced by the Trademark Act 1958, which was further replaced by the Trademarks Act 1999. This Act which was drafted in compliance with TRIPS obligations came into effect in the year 2003.

According to the Trademarks Act, 1999:

“Trademark 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 colours”.

The Trade Marks Registry is under the charge of the Registrar of Trademarks, and the Trademark Act 1999 deals with registration of trademarks in India. However, registration of trademarks is not mandatory in India but at the same time, while an unregistered trademark is protected, it does not have the statutory right of infringement. Thus, registration of trademark accords to its registered user certain benefits. To name a few, the registered trade confers upon the registered user the exclusive use of the mark in relation to the products or services. The corollary of this is that it allows the owner of the registered trademark to restrict others from using his trademark and benefit from his goodwill.

However, this does not mean that an unregistered trademark is left without any legal recourse to protect his mark. The common law provides certain benefits to an unregistered trademark, like under the tort of passing off. The action against passing off is based on the principle that “a man may not sell his own goods under the pretence that they are the goods of another man”.

To sum it up, an owner of a registered trademark has a remedy for infringement available under the Trademark Act 1999. For an unregistered trademark, a remedy for infringement is available in common law as an action for passing off.

For a registered trademark, the registered proprietor, his heirs and the registered users can sue for infringement.

The registration of a trademark is valid for a period of 10 years and can be renewed every 10 years until perpetuity. An application for registration of a trademark can be filed by any person claiming to be the proprietor of a trademark used or proposed to be used. The application may be made in the name of the individual, partner of a firm, a company, any government department, a trust, or even in name of joint applicants.

V. Conclusion

The point of trademarks is to allow consumers to associate goods and services with a particular mark so when consumers see the mark they know what to expect for their money. Companies invest large sums of money to create brand recognition. It is unfair to allow others to impede upon that recognition. Trademarks exist to protect consumers from confusion as to the source of a product or service.

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References

[1]What is Intellectual Property? Available Here accessed 24 November 2020.

[2] George SK, ‘Trademark Infringements in India’ (2016) 3 Ct Uncourt 22.

[3]Temple Bodley, ‘What is a Trademark’ (1882) 2 Ky LJ (Louisville) 151.

[4]Frank I Schechter, ‘Rational Basis of Trademark Protection’ (1927) 40 Harv L Rev 813.

[5]Guilherme Hatab, ‘The Trademark and Its Function in the Control of Commercialization’ (1975) 65 Trademark Rep 83.

[6]Alex Kozinski, ‘Trademarks Unplugged’ (1993) 68 NYU L Rev 960.

[7]Mark P McKenna, ‘The Normative Foundations of Trademark Law’ (2007) 82 Notre Dame L Rev 1839.

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