This article attempts to differentiate between two major intellectual property rights, i.e., patents and trademarks on the point of difference in laws, registration process, degree of protection, types, international treaties, etc.
Table of Contents
Introduction
The protection of intellectual property rights has become a necessity more than a luxury for businesses in the present day. This provides security to the existence of the business. Intellectual Property (IP) has become a vast field, providing various kinds of opportunities to businesses and individuals. The major types of IP functional in the present day are, inter alia, patents, trademarks, copyright, and geographical indications. Although the overall scenario might seem similar, each kind of IP right protects a completely different type of property. This article focuses on the key differences between a patent and a trademark.
Definition of patents and trademarks
Patent
A patent is a right granted to an invention to prevent any other person from manufacturing, processing, or distributing the invention for a limited time. In simpler terms, a patent is a legal document that grants the patent-holder (inventor) the right to exclusively manufacture, process, and distribute the invention. Invention can be both, a process or a product, as is discussed in the further sections. This proves to be an incentive for the inventor to enjoy the fruit of his investment, both monetary as well as time invested, in the development of an invention. However, this right is provided for a limited time, as the invention is necessary for the public interest as well.
Various definitions of ‘Patent’
● Section 2(1)(m) of the Patents Act, 1970 defines a Patent as –
“”Patent” means a patent for any invention granted under this Act”
● The Cambridge English Dictionary defines a Patent as –
“the official legal right to make or sell an invention for a particular number of years”
● Definition of Patent as per dictionary.com is –
“a government grant to an inventor assuring him the sole right to make, use, and sell his invention for a limited period”
Trademark
A trademark is a graphical representation that helps differentiate the goods or services of one proprietor from those of others. In other words, it is any mark, label, logo, name, trade dress, device, brand name, word, signature, or even the shape of goods, that indicates the connection of trade between the goods or services and the proprietor who has produced it. It includes everything that a buyer or consumer can relate to the manufacturer. For example, a single colour is also capable of protection under trademark law if it acquires an image in the minds of the consumers that helps them choose the particular product only. For instance, Cadbury uses a specific shade of violet colour and has won a dispute against Nestle.
Various definitions of ‘Trademark’
● As per Section 2(1)(zb) of the Trade Marks Act, 1999,
“Trade mark” 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 shape of goods, their packaging and combination of colours; and—
(i) …
(ii) in relation to other provisions (except Section 107) of this Act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right, either as proprietor or by way of permitted user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trademark or collective mark;
● According to Section 1127 of Title 15 in the United States Code,
The term “trademark” includes any word, name, symbol, or device, or any combination thereof-
(1) used by a person, or
(2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,
to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.
Types of patents and trademarks
Patents
There are various types of patents that are granted in various parts of the world. However, one must note that the patents are territorial in nature and a patent would grant protection only in the territory it is granted in. The different types of patents are as follows:
- Product Patent – A product patent is a type of patent that is granted to the final invention. In such a patent, the patent holder has a right to prevent any other person from making the invented product through available lawful procedures. This allows her to exercise complete monopoly on the product for the period of the patent. A patent is generally granted by the patent office for one or more claims made in a single invention if it meets the conditions necessary (as discussed in the next section). Thus, in a product patent, one or more claims can be granted protection only if the patent office deems it fit. However, an application may be rejected if multiple inventions are claimed under one single application.
Generally, a product patent is applied for inventions that require extensive research and investment for the product itself. In such a scenario, usually, the end product can be obtained through more than one process. A patentee, who has been granted a product patent has the right to prevent any other person from making, using, offering for sale, selling, or importing for those purposes that product in India.
- Process Patent – A process patent is a type of patent that is granted to the process of obtaining a desired result. The purpose of granting a process patent is to extend protection to such processes where multiple end products can be derived from a single process. In such a scenario, a patentee has the right to prevent any other person from using that process, and from using, offering for sale, selling or importing for those purposes the product obtained directly by that process in India.
- Plant Patent – A plant patent is a type of patent that grants protection to a new and unique variety of plants from being copied by others. A plant patent is generally granted in the United States of America. In India, a unique plant variety is protected under the Protection of Plant Varieties and Farmers’ Rights Act, 2001, and is usually referred to as a plant patent.
- Provisional Patent – As the name suggests, a provisional patent grants a right that is provisional in nature and would be confirmed only after all the requirements of patentability of an invention are fulfilled by the applicant. Section 9 of the Patents Act, 1970 provides a twelve-month window for the applicants to file the full specification after filing a provisional specification. If the applicant fails to fulfil the specifications, the application is deemed as ‘abandoned’. It is pertinent to note that the applicant has to mention the provisional nature of the application at the time of filing it (twelve months would not be allowed in the case of a conventional application or a PCT application).
Trademark
In India, a separate provision of ‘mark’ is provided to enlarge the scope of the types of trademarks. Section 2(1)(m) of the Trade Marks Act, 1999 provides the definition of a mark, which includes device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination of one or more of these. Thus, as discussed above, anything and everything that performs the basic function of a trademark can be granted protection under the trademark law. Trademarks can be distinguished as conventional and non-conventional marks. Conventional marks include words, devices (figurative elements), labels, headings, letters, numerals, logos, etc. Thus, a mark as defined under Section 2(1)(m) of the Act, consists of conventional trademarks. On the other hand, non-conventional marks are those marks that perform the function of a trademark and do not fall under the category of a conventional mark. Non-conventional trademarks include smell marks, sound marks, taste marks, shape marks, and colour marks. Each of these marks is described below:
- Smell Marks – A ‘smell mark’ can be defined as an olfactory mark, which uses the smell of the product to distinguish it from other products. It is pertinent to note that in order to protect a smell mark, it should not be a technical result of the product, as it would become descriptive. For example, if perfumes are allowed to be protected as a smell mark, a few brands would have a monopoly over all the perfumes in the world. Hence, if the smell is not the result of the product, it may be granted protection (a tennis ball with the smell of freshly mown grass is protected as a trademark; tyres with floral fragrance are protected as a smell trademark).
- Sound Marks – A ‘sound mark’ can be defined as a mark that uses audio notes to distinguish brands. An example is the tune of the well-known brand ‘Britannia’ or the ‘Yoodle’ by ‘Yahoo!’. The Indian Trade Mark Office allows a maximum of 30 seconds of tune to be registered as a trademark.
- Taste Marks – A ‘taste mark’ is a mark that distinguishes the products based on the taste. However, it is a very unique type of mark as due to the functionality test, the Courts do not allow the registration of any taste mark. If the product is edible, the mark would be its function, and if it is not edible, the taste mark would become redundant.
- Shape Marks – A ‘shape mark’ is a mark that allows the unique shape of the product or its packaging to be protected as a trademark. Sometimes, businesses use innovation in providing a shape to any product so as to ensure resemblance to their product itself. For example, the Coca-Cola Company has a registration for its unique glass bottle; Toblerone has a shape mark registration for its triangular chocolate, etc. Shape marks also include 3D marks, which extend protection to holograms etc.
- Colour Marks – Another non-conventional trademark is a ‘colour mark’. To grant protection to a colour mark, the Pantone colour system is accepted worldwide. As discussed above, Cadbury has been able to protect the shade of purple colour used in its packaging against Nestle, which is the perfect example of a colour mark.
International treaties and agreements under patents and trademarks
Patents
Paris Convention
The Paris Convention for the Protection of Industrial Property, 1883 is considered to be the dawn of protection of intellectual property worldwide. The Paris Convention applies to industrial property in the widest sense, including patents, trademarks, industrial designs, utility models, service marks, trade names, geographical indications and the repression of unfair competition.
The Paris Convention envisages three basic principles to be followed: national treatment, the right of priority, and the guarantee of a certain minimum protection to the contracting parties. One of the key aspects of the patent law under the Paris Convention is the provision for the grant of compulsory license, in cases where the invention was not being exploited with maximum efficiency and the patentee was not ready to grant the license on agreeable terms. Another crucial aspect is the right to claim priority, which allows an inventor to protect his or her rights more efficiently.
Patent Cooperation Treaty (PCT)
Under the Paris Convention, if an inventor had to obtain patent rights in multiple countries, they had to go through a cumbersome process of individual applications in each of the countries. There was no single application system wherein an inventor could obtain a patent in multiple countries. To overcome this, the Patent Cooperation Treaty (PCT) was signed in 1970. The PCT allows an inventor to file a comprehensive application for registration of a patent in two or more jurisdictions through a single application simultaneously. This helps the inventor to save time and money.
The PCT system has 155 contracting parties. As per this Treaty, an application for patent registration can be filed at the national office of the country of origin, which shall then notify all the designated contracting parties. The designated contracting parties would then process the application in accordance with international and municipal laws, and accordingly accept or reject the application.
The Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS Agreement)
The Agreement on Trade Related Aspects of Intellectual Property Rights, 1994 (TRIPS Agreement) was adopted in 1994, to ensure that all the contracting parties to the World Trade Organization (WTO) follow a minimum standard of protection for various types of intellectual property. Firstly, the TRIPS Agreement ensured that the provisions of the Paris Convention were strictly complied with. Secondly, the minimum duration for the protection of patents for the WTO parties was set to 20 years. Thirdly, the principles of national treatment were made mandatory. A harmonised procedure for the protection of patents allowed an increase in the number of applications worldwide, boosting innovation.
Patent Law Treaty (PLT)
The Patent Law Treaty (PLT) was adopted by the World Intellectual Property Organization (WIPO) in 2000 and came into force in 2005. The objective of the PLT is to harmonise and streamline formal procedures with respect to national and regional patent applications and patents and, thus, to make such procedures more user-friendly. This allowed the international patent system to operate in a more structured and systemized manner.
Trademarks
The Paris Convention
Under the trademark law, as discussed above, the Paris Convention is the first international instrument. The Paris Convention provided a broad standard of protection for all types of intellectual property, except for copyright. Thus, the principles of national treatment, minimum protection etc. are applicable here too as applicable under the patent laws.
The Madrid System
The Madrid Agreement Concerning the International Registration of Marks, 1891 and the Protocol Related to the Madrid Agreement Concerning the International Registration of Marks, 1989 together form the Madrid System for international registration of trademarks. The Madrid System allows an applicant to file a comprehensive application for the registration of a trademark. The application can contain the designated parties (countries) where the applicant wishes to protect the trademark, accompanied by the required fee. The system also allows the proprietor of a trademark (registered under the Madrid System) to renew the mark in all the designated states with a single application form.
The application has to be submitted to the IP office of the originating state, which shall notify the WIPO regarding the application details and the designated states. The WIPO would notify all the designated States, which would then treat the application under their municipal trademark law, and either grant protection or reject the application.
The Nice Agreement
The Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, 1957 establishes an international classification of goods and services. The ‘Nice Classification’ comprises 45 classes of goods and services, 35 for goods and 10 for services. It allows uniformity in the classification of goods and services for the purpose of registration of trademarks. Each of the countries party to the Nice Agreement is obliged to apply the Nice Classification in connection with the registration of marks, either as the principal classification or as a subsidiary classification, and has to include in the official documents and publications relating to its registrations of marks the numbers of the classes of the Classification to which the goods or services for which the marks are registered belong.
Vienna Agreement
Just like the Nice Agreement, the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks, 1973, known as the Vienna Agreement establishes a classification for figurative elements used in a trademark. The purpose of the classification is essentially to facilitate trademark anticipation searches and obviate substantial reclassification work when documents are exchanged at the international level. What is more, the countries party to the Vienna Agreement no longer need to draw up their own national classification or keep an existing one up to date. It is divided into 29 sections, which are further divided into subsections. The ‘Vienna Classification’ aids the search of device marks for the purpose of registration of a trademark.
The Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS)
The Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement, as discussed above, provides the minimum standard to be followed by the members of the WTO for the protection of intellectual property rights, including trademarks. As per the TRIPS Agreement, the minimum protection to be provided for trademarks is seven years, with the option for perpetual renewal. Moreover, the TRIPS Agreement left it at the discretion of the contracting parties to extend protection to well-known trademarks. The Agreement also defines the scope of the subject matter that could be protected under the trademark laws.
Laws in India for patents and trademarks
Indian laws governing patents
In India, the first law to govern patents was introduced under British colonial rule. During the colonial period, the British made laws based on the law applicable in Great Britain. The same is evident under the patent system as well. The first legislation in India governing the patent law was the Act VI of 1856, which was based on the British Patent Law of 1852. It was enacted to provide exclusive privileges to inventors for a period of 14 years. Thereafter, it was replaced by the Act XV of 1859, which allowed exclusive privileges as well as the right to the patentee to grant licenses to others. Another important change that was brought through this Act was the increase in the date of priority from six months to twelve months.
The Indian Patents and Designs Act, 1911 was the next statute enacted to govern the patent law. It replaced all the previous laws and provided protection both to patents and designs. It was amended a few times to cope with international law. However, after independence, it was felt that the 1911 Act was not fulfilling its objective. Thus, the Patents Act, 1970 replaced the 1911 Act.
The Patent Act, 1970 lays down the substantial law for the protection of patents on inventions in India, whereas the Patents Rules, 2003 provides the procedural law regarding the registration and protection of patents in India. As a member of the World Trade Organization, India has to comply with the TRIPS Agreement, 1994. The TRIPS Agreement provides for the minimum threshold that the member nations of the WTO have to follow in their municipal laws.
For the protection of patents in India, the patentee has to mandatorily register the patent with the patent office. This is envisaged under the provisions of Section 48 of the Act, which provides that the exclusive right to use the invention is granted to the patentee only after the patent is registered. For registration in India, the invention has to pass the ‘NUNS test’, which stands for ‘Novelty, Utility, Non-obviousness, and Subject Matter Eligibility’. This is to ensure the balance between the rights of the patentee and the public interest.
The period of protection under the Patents Act is 20 years from the date of filing of the application or provisional application, as the case may be. This is similar to the minimum threshold set by the TRIPS Agreement, as mentioned above.
The subject matter of patents is inventions. A patent is granted to a person who invents a new (novel) product or process, that has an industrial application (utility) that could not have been anticipated (non-obvious) by a person of ordinary skill in the art and is not barred by the law (subject matter eligibility). If an invention meets the criteria, then an exclusive right to manufacture, distribute, sell, license, and import the said invention in India is granted to the patentee, as a reward.
Indian laws governing trademarks
The trademark law in India, like the patent law, has a history from the colonial period. The first formal legislation on the subject was the Trade Marks Act, 1940. The statute provided the conditions for the registration of a trademark and its use. Prior to the statute, the trademark law was governed by the provisions of the Specific Relief Act, 1877 and the Indian Registration Act, 1908. The two Act governed the trademark law in the country for almost eighteen years, when the need for a new law was observed after independence. This led to the enactment of the Trade and Merchandise Marks Act, 1958 which replaced the 1940 Act. The 1958 Act consolidated the provisions relating to trademarks in other statutes such as the Indian Penal Code, 1860, etc.
The 1958 Act also had certain shortcomings. It was not developed keeping in mind the various economic advancements that took place in the 1990s, one of the most crucial ones being the adoption of the Liberalisation, Privatisation, and Globalisation (LPG) policy. With the entry of MNCs in India, there was a need to review and amend the trademark law as well. Moreover, India being a member of the WTO, had to comply with the provisions of the TRIPS Agreement. Consequently, the Trade Marks Act, 1999 was enacted. Another major difference brought in by the 1999 Act was the introduction of the concept of ‘well-known trademarks’.
Presently, the substantive law is covered by the provisions of the Trade Marks Act, 1999 and the procedural law is covered by the Trade Marks Rules, 2017. The registration of trademarks is not necessary as it does not confer any additional rights to the trademark proprietor. The trademarks are protected under the common law rights, against the tort of passing off. However, by opting for registration, the law enables a proprietor to access the right of remedy of enforcing a trademark, in case of infringement.
Summary of difference between patents and trademarks
| Point of difference | Patent | Trademark |
| Definition | A patent is an exclusive right granted to an invention that is novel, has an industrial application and is non-obvious in nature. | A trademark is a mark (word, sign, brand name, device, or any other mark), which is capable of distinguishing the goods or services of one proprietor from those of others. |
| Protection under law | In India, a patent is granted protection under the provisions of the Patents Act, 1970. The protection is granted for 20 years from the date of application, with no provision for renewal. | In India, trademarks are governed by the Trade Marks Act, 1999. It grants protection for 10 years with the option to renew the marks as long as they are in commercial use. |
| Nature | The nature of a patent is an exclusive right to an invention, so as to incentivise the efforts of the inventor. | The nature of a trademark is to protect the reputation of a mark, which is associated with it in the minds of the consumers. |
| Registration | Registration of a patent is necessary and no common law right on the basis of use can be granted. | Registration of a trademark is not necessary, as the use of the mark is the primary concern. A trademark may build a reputation without being registered. The law of passing off governs unregistered trademarks. |
| Objective | The objective of a patent is to incentivise the inventor for the efforts. There is a balance between the incentive and the public interest. The law is required to encourage innovation and development. | The objective of a trademark is the protection of the goodwill of the mark/brand. It is concerned with the reputation of the proprietor. The law is required to encourage proprietors to maintain the quality of goods and services. |
| Infringement | The infringement of a patent takes place when a person other than the patent-holder or permitted user, manufactures, distributes or imports the patented product without authorization by the patent-holder. | The infringement of a trademark takes place when a person other than the trademark proprietor or a permitted user, uses such registered mark without the authorization of the trademark proprietor and passes off goods as having originated from the original proprietor. |
| Example | Patents are granted in pharmaceutical industries (such as medicines of Cipla Pharmaceuticals), telecommunication industries (such as Micromax), technological industries (such as Microsoft, and Apple) etc. | Brands such as Apple, Nike, Adidas, McDonald’s, Domino’s, and Supreme are examples of trademarks. More examples include the famous Nike Swoosh, the bitten Apple etc. |
Conclusion
Two of the most important intellectual property rights are patents and trademarks. While patent deals with inventions (products as well as processes), trademark law deals with the marks distinguishing products and services of different proprietors. As discussed hereinabove, the law regarding patents is a much technical one, granting restricted monopoly and balancing between the public interest and incentives to the inventor. On the other hand, trademark law protects the reputation of the proprietor attached to a mark, which helps the product with a specific mark stand out in the market.
Thus, the protection granted to a patent is for a much less period than that for a trademark. However, it is balanced by the threshold adopted during infringement proceedings, as can be seen in various cases under patent and trademark law. Nevertheless, both aspects of intellectual property are very crucial for industrial development, and hence the economy.
Frequently Asked Questions (FAQs)
How can one acquire a certification as a Patent or TM agent/attorney?
In India, to obtain a certificate to practice as a Patent or Trademark agent, a person has to clear the Patent or Trademark Agent Exams conducted by the CGPDTM. Additionally, to practice as a Patent or Trademark Attorney, a person needs a degree in law along with registration in the respective bar council.
How long does the process of registration take?
For patents, the procedure for registration usually takes around 3-4 years from the date of filing, as it requires extensive examination of the claims made. However, this is not a mandatory timeline and it may differ on a case-to-case basis.
Whereas, for trademarks, it usually takes around 18 months from the date of application to registration of the mark. The registration procedure includes the examination of the mark, followed by objections from the public. If the trademark is not objected to by the Registrar or the public, it may be registered within 6-12 months. The time period for the registration process would depend on a number of factors, and thus, a time period is not prescribed in law. For additional information, one can visit the IPIndia website.
How do the disclosure requirements for patents and trademarks differ?
Disclosure requirements for patents and trademarks differ in gravity. The underlying principle of patent law is to provide the public the advantages of research and development, or inventions. While doing so, to promote more innovation, patent law grants a limited monopoly to the inventor. Thus, while granting such a monopoly, the patent office needs to publish all the crucial information to the public, so that the public is aware of the same. Moreover, it would also help in further innovation.
On the other hand, disclosure requirements in a trademark application occur only when the trademark proprietor claims goodwill for the mark, established before making the application. This would be limited to sales figures, spending on advertisements, date of use of the mark etc. A trademark application would not require crucial information relating to the product to be published for the public.
Are there any restrictions on the types of words, symbols, or designs that can be used as trademarks, and do similar restrictions exist for patents?
Yes, the Indian trademark law, i.e., the Trade Marks Act, 1999, imposes restrictions on what kind of marks can be registrable. Such restrictions are enlisted under Section 9 of the Act. Examples of such marks could be the Indian flag, the map of India, the generic name of the product itself, etc.
Restrictions are also imposed on inventions. Sections 3 and 4 of the Patents Act, 1970 lay down the inventions which are not protectable under the Act. These include a mixture of available substances, mathematical equations, methods of agriculture or horticulture, atomic energy etc.
References
- https://www.wto.org/index.htm
- https://www.wipo.int/portal/en/index.html
- https://www.uspto.gov/ip-policy/patent-policy/trade-related-aspects-ip-rights
- https://ipindiaservices.gov.in/
