This article has been written by Pragya Srivastava, pursuing a Diploma in Intellectual Property, Media and Entertainment Laws from LawSikho.
Table of Contents
Introduction
For any industry, company, organization, or business, building a brand name is very important in today’s era where competition and technology are continuously increasing. When a business creates a brand name, its customers easily recognize it among its other similar competitors who are dealing in the same market. Once a business creates its brand name, it needs to protect this name from others from misusing it and hampering its reputation and goodwill in the market. This is where intellectual properties come into play.
Intellectual property rights are basically the rights used by a person over their creative ideas which they have used in building a successful brand name for their business. Whether it is a unique name for your brand or your creative writing, composition, painting, sculpture or even your own creation of technology, Intellectual Property Rights has it all covered. It is basically protection given to a person over his creativity to protect his creation from others.
This article covers the meaning of Intellectual Property Rights, how these Intellectual Properties are effective in protecting the brand name of the company and also the registration process to protect these rights, and precautionary steps taken in case any person violates these rights.
Have a unique idea for your brand? Want to protect your ideas from others from stealing? You have your intellectual property rights to the rescue!
Role of intellectual properties in protecting a brand name
For every business, its brand name is valuable, but what exactly is a brand? A brand is the strong name, design, logo, term, or any other thing which is used by a company to identify its product or services. A strong brand name creates goodwill for a business in a competitive environment. When a business has a strong brand name, it will help its current and potential customers distinguish its goods/services from the goods/services of its competitors. But the question now arises is how to protect a brand name of a company?
In such cases, intellectual property assets can be used by a company in protecting and building a stronger brand image for its company. There are different types of Intellectual Properties that a company uses to protect its name, inventions, creations, ideas, etc. If a “brand name” solely identifies the brand owner as of the commercial source of items or services, it is considered a sort of trademark. A brand owner can use trademark registration to safeguard their proprietary rights in a brand name; these trademarks are known as “Registered Trademarks.”
Registration and prosecution
As an inventor or creator, a person has a right to protect their inventions, ideas, or creation and prevent others from using them without permission or without giving due credits. To legally enforce these rights, it is always advisable to get your ideas or inventions registered. Getting an intellectual property registered with the concerned authority, a person can prevent others from using its ideas (its brand name) as his own and will also help a person legally to prosecute any other person using a similar invention or ideas in its name.
Registration of a trademark
A trademark is any sign, design, symbol, word, combination of colors, smell marks, etc used for any goods or services. It is a brand or a source identifier. A trademark distinguishes one good/service from its competitors. It provides a brand or value to a product.
When a trademark is distinctive in nature from the goods/services that it provides it becomes easier for it to get registered. It should be unique from the goods/services that any other competitor provides in the same market so that customers can recognize such a trademark and distinguish it from its other competitors who are dealing in the same market.
India is a common law country, which means that it recognizes the use of a trademark so it is not compulsory to register a trademark but it is always advisable to do so as registration provides wider protection. Eg. A person can start using its trademark with its goods or services without getting it registered. With continuous use of its trademark, he can claim right over it. But this right is only limited to the geographical limit within which its goods/services are provided. But if he registers his trademark he can easily claim wider protection over it. He can then not only claim its right limited to the geographical limit but he can now protect its trademark worldwide.
Also, a person can only protect its trademark from its competitors using the same products or services or who are coming under the same class of goods/services. Eg. If a person has registered a trademark under class 5, he can protect his trademark from other competitors who are also dealing with the goods/services under the same class.
Following are the steps to get a trademark registered
Step 1- Trademark Search
Conducting a trademark search is the first and important step as it helps a person going for its trademark registration to know whether any other similar trademarks are already in use in the same class of products/services in which the person is seeking registration.
Step 2- Application filing
After the trademark search is conducted successfully, a person can file an application to get its trademark registered with the Trademark Registry within whose territorial limit the business is situated. At present, there are five registry offices which are at Calcutta, Delhi, Mumbai, Chennai, and Ahmedabad. Application is always filed in the form TM-1. It can be filed online or offline. Nowadays, most of the filings are done online.
Step 3- Accepted or Objected
The trademark can then either be accepted or Objections can be raised by the registry.
If the trademark is accepted, it will then be published in the trademark journal. After it is published in the trademark journal, if any person has any objections to such trademark registration, he can then file a notice of opposition under Section 21 of the Trademarks Act within 4 months from the date on which it was published in the journal. After the Notice of Opposition is filed, the applicant then has to file its Counter-Statement in response to the NOP. Counter-Statement is filed under Section 21 (2) of the Trademarks Act within 2 months from the receipt of NOP.
After examining the trademark application, the registry can also raise its objections. The objections are raised in the Examination Report. A written response is then filed by the applicant after receiving the examination report. After receiving the response, if the examiner is satisfied, he will then accept the report. The acceptance can be conditional.
Response filed to the examination report should be made by a person on record. One examination report allows one response only. The response can be filed electronically in the MIS-R form. The response should be filed within one month and not 30 days from the date of receipt of the examination report. The deadline to file a response to the examination report can be extended by 1 month at a time, by filing a request in the form TM-M (can be extended by 1 month “at a time” means it can be requested to extend the time by any no. of times, but it is always advisable to not request it for more than 3 times in total)
If the examiner is not satisfied with the response, he will then allow an oral hearing to the Applicant.
Step 4- Trademark Registration
After all the above steps are completed, the application then moves to its registration stage. Once it is published in the trademark journal, a registration certificate under the seal of the trademark office is then issued.
Once a trademark is registered, it is valid for 10 years and can also be renewed after every 10 years. Hence it can be protected perpetually.
Prosecution provisions under the Trademarks Act, 1999
A person can initiate the prosecution proceedings under the act if its original product or his brand name is misused or is stolen by any other person. When a person’s Intellectual rights are infringed by another person, remedies in the name of initiating prosecution proceedings against such person are provided under the act. Section 103 and 104 of the act deals with the prosecution clauses. 
Comparison between the laws of India vis-à-vis laws of USA
While the Indian Trademark laws are protected by the Trademarks Act, 1999, the Trademark issues in the USA are governed by The Lanham (Trade Mark) Act 1946. Every country is governed by different laws so there is a high chance that there will be some difference between these laws. Following are some points discussed upon which the trademark laws of India and the USA differ.
- Use of a Trademark- In India, to prove “use” mere advertisement of the business will suffice. It does not necessarily include proving the “actual sale” of the products/services. While in the USA the scenario is a bit different. The courts in the US have declared that mere token use of a product will not be enough. The Supreme Court of India held in a case involving Toshiba Corporation that, in the event of a government ban preventing goods from being imported into India, a single instance of Toshiba advertising in India, combined with its global reputation, registrations for the TOSHIBA brand, and marketing, gave the corporation’s trademark immunity from cancellation.
Also, India recognizes a trans-border reputation for the concept of the “first used” mark. This means even if the mark is not registered in India or none of its products is sold in India, it can acquire a Trademark in its name based on the global popularity and goodwill. While in the USA use of the mark in the country or commerce between a foreign country and USA is important.
2. Proposed to be used basis- While India recognizes the concept of proposed to be a used basis, the USA on the other hand does not. It means that in India, to get a mark registered, it is not important to show that the mark is “in use” it is sufficient to show that the mark is being registered on a “proposed to use basis” which means it is getting registered today while it will be used afterward. The case is the opposite in the USA. To get a mark registered, it is important to show that the mark in question is “in use”.
3. Deadline to file opposition- Opposition petitions are filed when any third party has an objection to the registration of a mark. In India, the deadline to file the opposition petition is 4 months from the date on which the mark is advertised in the Trademarks Journal. While in the USA the deadline to file the opposition petition is 30 days from the date on which the mark is published in the Official Gazette. This deadline can be extended up to 180 days.
4. Validity of a trademark- In India, once a trademark is registered with the Trade Mark registry, it is sufficient proof of the validity of the Trademark and the proprietor can use such mark to the exclusion of others. But in the USA a proprietor has to wait for 5 years after the registration and when all the formalities required by law are fulfilled and 5 years have passed from registration, then the registration of the mark becomes valid and conclusive.
Remedy- While the USA laws provide only civil remedies ( remedy is given mainly in monetary terms) Indian laws provide criminal remedies. The infringer of a trademark will be made punishable with imprisonment.
Landmark judgments
The case of Millet Oftho Industries & others v. Allergan Inc. [Civil Appeal No. 5791 of 1998], was the first to join the global market/Protecting established foreign brands under Indian trademark law/Healthcare and medicine.
In this precedent-setting case, the Supreme Court of India extended the protection afforded by Indian trademark law to a well-known foreign brand. An Indian business was barred from using the trademark OCUFLOX by the court. The court decision was made even though the US corporation had not utilized the mark in the Indian market and that the mark had not been registered in India. The respondent in this instance was the first to enter the market and use the mark, according to the court. Furthermore, if the respondent was the first to engage the global market, the fact that they’ve not used the mark in India is irrelevant.
It was also said that in the sectors of healthcare and medicine, any opportunities for deceit and confusion should be avoided at all costs while ensuring that the public’s interest is not harmed.
Courts have continuously through their judgments delivered the importance of branding for any type of industry whether it is medicine, fashion, technology, or arts. From this case, we can see the importance of brand value. Although the respondent company did not register its trademark in India, still as it was the first to enter the global market, it created such a strong brand and goodwill for its company that without registration in India, the court protected its trademark.
Conclusion
A trademark offers legal protection for a brand, while a brand can be characterized as the representative parts of a company’s corporate image, which builds and develops through time via generating trust. Companies should be using trademark protection to protect the capital investment they made in developing their brand. Trademarks do not have to be registered, but the owner of a registered trademark has significant advantages over the owner of an unregistered trademark, who often has difficulty proving the existence and scope of his or her rights.
Trademark registration helps generate an exclusive right and distinguishes the product from identical products sold by other companies. For the owner, a trademark serves as an intangible asset that protects the brand for a long time. The owner of a trademark has the first right to use such trademarks, symbols, and expressions. A brand needs to be protected and safe in a market like India. As a result, having a trademark registration in India is important not because it is required, but because it is necessary.
References
- http://www.wipo.int/trademarks/en/.
- https://talwaradvocates.com/5-landmark-judgements-trademarks-law/.
- https://blog.ipleaders.in/trademark-india-us-eu/.
- https://www.mondaq.com/india/trademark/516816/indian-trademark-law-comparative-analysis-with-europe-and-us.
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