Passing off
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This article is written by Shubhangi Sharma, a 5th-year student of BA LLB in Lloyd Law College, Greater Noida. The article discusses the Trademark.

Meaning of Trademark

Trademark is one of the important portions of Intellectual property. Trademark is a distinctive sign, Indicator or symbol of a person, business organization, company or any other legal entity which distinguishes itself from other competitors. A trademark is a kind of intellectual property, typically a name, word, phrase, logo, symbol, design, image, or a combination of these types of elements. According to Section2(e) of the Trade Mark Act, 1999, a certified trademark means a mark capable of distinguishing the goods or services in connection with which it is used in respect of trade which are certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics from goods or services not so certified and registrable as such under Chapter IX in context of those goods or services in the name, as proprietor of the certification trademark, of that person. 

WIPO defines a trademark as a sign which is capable of distinctly distinguishing the goods or services of one individual or enterprise from those of other individuals or enterprises. The owner of the trademark can prevent other competitors from carrying almost the same type of mark if it can lead to confusion. This will prevent high-quality goods from replacing low-quality goods. Registration of a trademark is not necessary but looking at the present scenario, it is advisable to register your trademark to restrain anyone from misusing it. A registered trademark offers a bundle of exclusive rights to the owner as he can claim exclusive use of the mark in relation to his products and can restrain anyone from doing so. A trademark is also needed to be globally recognized. This is because many brands have a local or regional name and they struggle to get global clearance. 

Types of Trademark

There are basically four types of Trademark:

  1. Service Marks: A service Mark can be termed as the word; name, symbol, device, or any combination which are used or intended to be used in commerce to identify and distinguish the services of one provided by others and to indicate the source of services.8 It is basically used for distinguishing on the basis of services. It only covers provisions of services and not physical goods.
  2. Collective Mark: A collective Mark is another form of the trademark which is used by several cooperative associations, union or other collective group or other group or organization to identify source of goods or services. A collective mark termed as a mark which is utilized for goods and services with the same characteristics which are to be traded by one or more persons who is acting jointly or legal entity for differentiating the same kind of goods from other goods or services.
  3. Certification Mark: A certificate is evidence of probative matter providing assurance that some act has or has not been done or some event occurred or some legal formality has been complied with. A certification Mark is a mark which indicates that certain qualities of goods or services in connection with which the mark are used is certified.
  4. Trade Dress: Trade dress refers to the combination of elements that make up the look, feel, or environment of a product or business; the term can refer to individual elements of a product or business image as well as to the image or the combination of those elements which creates as a whole.

How do Trademarks help you?

Grants exclusive right- A trademark not only gives the trademark owner the exclusive right to use the mark but allows the owner to prevent others from using a similar mark which may be misleading to the general public. A trademark cannot, however, prevent another person or company from selling or selling the same goods or services under a clearly different mark. Trademark’s authority may be exercised in a commercial or commercial setting in a lawful manner.

  1. A trademark is an effective communication tool– In a single brand or logo, a trademark may convey intellectual and emotional characteristics and the reputation of you, your company and your company, products and services. The trademark must not be a word. Design can be identified regardless of language or alphabet. The Nike “Swoosh” design is recognized globally, whether its native language is Swahili, Chinese, Spanish, Russian, Arabic, or English.
  2. Trademarks make it easy for you to find customers- The market is crowded and it is difficult to differentiate your business from its competitors. Trademarks/brands are effective tools for commercial communication which attract customers’ attention and make the business, products and services stand out. Customers who see the trademark immediately know who they are dealing with; they are less likely to seek reputation and options in your business. Your brand can be an important factor in a customer’s purchasing decision.
  3. A trademark is a valuable asset– Trademarks may appreciate in value over time. The more business reputation increases the more valuable the brand will be. Trademarks provide value beyond your core business. Trademarks can pave the way for expansion from one industry to another, such as personal care of clothing or eyewear. If you wish, your trademark can be acquired by a large corporation. A trademark is a property asset, similar to real estate, that can be bought, sold, licensed (such as for rent or lease) or securing a loan to develop your business Used as a security interest to do.
  4. Trademark never expires The trademark never expires as long as someone is using it. Some of the most recognized brands are still there as there has been over a hundred years. Mercedes was first registered in 1900. Pepsi-Cola was registered in 1896. Brands are an important asset. Do your due diligence before investing a lot of time and money into launching a new brand. Make sure the brand suits your company. Get a clearance search to ensure that your new brand is available and does not violate anyone’s prior rights.

One must take diligent care that the brand must differentiate their brand from others in the respective industry, and must be easy to protect you. Choose a name and logo that uniquely identifies the business and protects it from competitors.

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How to register a trademark?

  • Step 1: Search for a weird brand name

Try to come up with a weird and quirky brand name, because the entire usual one must be taken by others. Before choosing a brand name, one must do a quick search to make sure no one else is already using the brand name. One must use invented or fabricated words in combination with generic words as the brand name of the company or something else.

  • Step 2: Apply for a trademark application

After the name has been finalized, fill in the trademark application i.e. Form TM1. The cost of application is INR 3500 and is a one-time fee.

Along with the application, you need to submit some supporting documents:

  1. A business registration concern: Depending on what type of registered business one have, say sole proprietorship, etc., one will have to produce proof of identity and proof of address of the directors of the company.
  2. Image of the brand logo in a standard size of 9 x 5 cm.
  3. If applicable, the proof of claim of the proposed mark is being used first in another country.
  • Step 3: Filling the brand name registration application

There are 2 methods of registration – manual filing or e-filling.

In case of manual filing, you have to go to the authorized person and submit the application for registration to any trade mark office in Mumbai, Delhi, Kolkata, Chennai and Ahmedabad. After which you receive the acknowledgement and receipt of the application, usually within 15-20 days of filing. But in the e-filing system, the acknowledgement of the application is issued immediately. And after getting the acknowledgement, one can start using the (TM) symbol next to the brand name.

  • Step 4: Check the brand name registration application

After getting the application, there is the duty of the registrar checks whether the brand name complies with the law or must not conflict with other existing registered or pending brands.

  • Step 5: Publication in Indian Trade Mark Magazines

After the examination, the logo or brand name is published in the Indian Trade Marks Journal. If there is no conflict within 3 days from the date of publication or from a few days to 90 days, the brand name proceeds for acceptance.

  • Step 6: Issue of trademark registration certificate

If no one opposes, the registrar accepts the trademark application within a period of 90 days and issues a certificate of registration under the seal of the trademark registry. After the certificate is issued you may now be allowed to use the registered trademark symbol (®) next to your brand name.

The entire process of registration of a brand name usually takes between 15-18 months. The trademark, once accepted, is valid for a period of 10 years from the date of issue of the Certificate of Registration. After the expiration of 10 years, the trademark has to be renewed.

What is trademark infringement?

A party who holds the rights to a certain trademark can sue other parties for trademark infringement. The possibility of confusion determines whether a person can sue another business or person for trademark infringement. If the use of another person’s trademark to sell a product or service is likely to cause consumer confusion about the source of the product or service, then the person poses a potential for trademark infringement.

Some factors to be considered by the court when determining whether consumers can be confused:

  1. Mark strength
  2. Proximity to products
  3. Double-digit parity
  4. Current evidence of customer confusion
  5. Specific buyers will use caution
  6. Used the similarity of marketing channels
  7. Defendant’s intent

An example of trademark infringement is if another company uses the same mark on the same product or service. If one tries to sell computers manufactured under the Apple brand, this effort will cause consumer confusion. Many customers will believe that they are Apple Inc. buying a computer manufactured by, therefore; trademark infringement can be claimed by the use of the Apple mark. Scars must be similar in meaning, form and sound to create consumer confusion. Some other examples of trademark infringement include using apricots or applets for computers. However, if you use the same product that is completely unrelated, you will not be accused of trademark infringement. For example, “Habib beauty and co.” and “Habib law firm” can be acceptable because the customers will easily be able to differentiate between the two and the services which they are giving.

What are the remedies of trademark infringement?

The Trademark Act, 1999 provides both civil as well as criminal remedies for the infringement of trademark stating the unfair trade practices. As infringement of trademark is a cognizable offence and criminal proceedings can be carried against the infringer. The civil remedies can be taken in the district court by the trademark owner under whose jurisdiction he resides.

Civil remedies for a trademark:

Injunction

A person action of injunction is referred to as a stop a person from doing a particular activity from the judicial process. With regard to trademark infringement, if someone is prevented from unauthorized use of the trademark. The temporary injunction may be given at any stage of any order for the prescribed period or court suit. The court can order permanent or temporary injunction for the protection of the trademark. This will be a matter of utmost concern for any aggrieved party as the other party may continue to use the mark until the court meets a temporary injunction and it is against the objective to file a lawsuit of infringement or passing-suit.

Damages

Damages are compensation for the loss which can be recovered by the owner of the trademark from the infringement of the trademark. The monetary value of financial loss or loss to the reputation of the brand is recovered under damage. The amount of the damage will be awarded by the court after taking into consideration the actual and certain loss of the owner because of the infringement.

Custody of infringing materials

The measure states that the court may order the infringer to deliver all goods or products that are labelled with the brand name. Here, the court can direct the return of related material accounts and destroy all such goods. Where the trademark relates to the services, that is, the service mark has been infringed then the order by the court may be passed immediately by the infringer to stop the provision of services.

In case of trademark infringement/passage, a criminal complaint can also be filed under the Trade Marks Act, 1999, which states that the registered owner of the trademark was filed the FIR through the police against the infringer.

How extensive is trademark protection?

All the countries in the world have the authority to register and protect the trademark under them. Each national or regional office manages a register of trademarks containing the complete information of application on all registrations and renewals, which facilitates examination, discovery, and possible protest by the third parties. However, the effects of registration are limited by country (or, in the case of regional registration, countries). To avoid the need to register individual applications with each national or regional office, WIPO operates an international registration system for trademarks. The system is governed by two treaties i.e. Madrid Agreement related to the International Registration and the Madrid Protocol. Individuals with a link (through nationality, domicile or establishment) can obtain either of these two treaties internationally based on the registration or application of a party of one country or the trademark office (or a related area) of that country. Registration is effective in some or all countries of Madrid union.

The consequence of non-use or removal of the trademark

In India, Section 47 the Trademark Act 1999 presents two scenarios regarding the removal of a registered trademark, they are;

  1. If it is proved that the trademark was registered with the intention of use on behalf of the owner. More often than not, as a part of the trademark search that we conduct, we come across many applications that have been entered into all 45 classes when the mark is actually used for only one or two classes. It is a defensive registration and the Court has held in various cases that such registration should not be encouraged.
  2. If the trademark has not been used for a continuous period of 5 years from the date of registration and three months before the application for registration is filed. So effectively, if the mark has not been used for a period of 5 years and 3 months, any aggrieved person can file for correction.

So in the first type of case if a person can show that the applicant did not really have any intention of using the mark, then they can petition to have the mark revoked, and in the second scenario, even if certain habits Use, 5 years after registration. The continuous period mark, if the mark was not used an application for rectification may be filed.

What is the process to change the ownership?

A trademark becomes valuable when customers associate the brand with certain goods or services. Trademarks can be sold and transferred from one owner to another through a process called assignment which is stated under Section 38 of The Trademark Act, 1999. This process involves creating an assignment agreement and recording the agreement with the Patent and Trademark Office.

  • Step 1

Prepare a trademark assignment agreement between the assignment and the assignment, and obtain a signature from both parties on the agreement. The assignment is the person or company that owns the trademark and the assignee is the person or company who is acquiring it. The agreement must identify the parties and trademarks to be transferred and include other details that the parties have agreed upon, such as how much the assignment is paying for the trademark, which party to pay the transfer fee is. Will, and how there will be disputes regarding the assignment agreement. The parties will settle someone.

  • Step 2

Complete a record form cover sheet; create PTO-TM-1594, available on the PTO website. To complete the form, you will need information about the parties and the transfer of the trademark. You will also have to provide the agent’s name and address to obtain information about the trademark.

  • Step 3

Record the cover form sheet with the signed trademark assignment agreement and the assignment record branch of the PTO. You can file assignments and pay the recording fee electronically, by fax or post. If you record a transfer electronically or by fax, you must first create and deposit the amount in the deposit account with the PTO to pay the recording fee. If you record by mail, you can include a check or money order payable to the director of the Patent and Trademark Office.

Passing off

“Nobody has the right to represent his goods as the goods of somebody else”. This is the underlying principle that has been laid down in the whole sphere of Intellectual Property Rights. In simple words, if a person sells his goods as the goods of another, then the trademark owner can take action as this becomes a case of passing off. Passing off is being used to protect or safeguard the goodwill attached with the unregistered trademark. When the trademark has been registered by the owner then it becomes a suit for infringement, but if the trademark has not been registered then it becomes a case of passing off.

Example: A runs a company that sells electronic goods. The trademark for his company is ‘QUICKER ELECTRONICS’. He has been using the trademark for providing his service over 12 years but has not registered the same. A company XYZ decides to sell its electronic goods also as ‘ QUICK ELECTRONICS’. In the mind of people who decide to buy the goods, they would associate ‘QUICK ELECTRONICS’ as ‘QUICKER ELECTRONICS’ and thus because of the acquired goodwill of A’s company, they would purchase XYZ’s products.

Here, there is a commitment to passing off of goods by XYZ as he is representing his goods as the goods of A’s company. A can file a suit for passing off.

Conclusion

Trademark is a badge of any product for protecting the name of the product or service. It is a commercial asset which is used by the owners of the product. It is a tangible right over the tangible property. It is a right which can be claimed or enforced by action not by physical possession. Trademarks are the exclusive rights which a person enjoys with respect of his good and services. It allows the owners to have the benefits from their works when these are exploited commercially. A party who holds the rights to a certain trademark can sue other parties for trademark infringement. The possibility of confusion determines whether a person can sue another business or person for trademark infringement. The trademark should be distinctive and unique. Trademark becomes the face of the product or the badge of the product upon which the reputation and the goodwill of the product depends. In developing countries like India, require more advanced technologies to be competitive in today’s world. So for this, we need some serious changes regarding our policies for encouraging technology transfer and there is a need to do it faster.


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