By Vignesh Ganesh, G.J. Advani Law College, Mumbai.
“What is in a name?” I am sure you would have heard these immortal lines by the famous playwright, Shakespeare. This line sounds cool in the literary sense, but if Shakespeare knew of the exclusive value this line held in terms of intellectual property rights, he would definitely find the irony greater.
How many times have you heard of a person visiting a store and asking the storekeeper for a “Colgate” instead of toothpaste, or how many times have you heard a person ask for “Pepsi” or “Coke” instead of a soft drink. A trademark established to be insanely popular has the power to define and become the default term for an entire class of goods or services. The brand names of other competitors do not even feature in the competition. That is the power enjoyed by the established businesses that own these trademarks.
When Google was being newly incorporated, the founders of Google could never have known in their wildest dreams, that the word “Google” would grow synonymous with the word “Search”.
Importance of Registration
While the success stories of these extraordinary brands have revolutionized generations, these success stories show how important it is to create a brand that becomes memorable. In order for a brand to make place in a person’s mind, you will want to register and protect the trademark through the Trade Marks Registry established in India, under the provisions of the Trade Marks Act, 1999.
It is quite common a belief that a trademark and business name are the same, but that is not always so. It is quite common for a business to take up an alternate brand name or a catchy fictitious brand name. For example, Dettol, a household anti-bacterial product is manufactured by a company with the business name Reckitt Benckiser Ltd. Horlicks, a malted milk hot drink is manufactured by a company with the business name GlaxoSmithKline Consumer Healthcare Ltd.
For a trademark to be a good trademark and a valuable asset to companies, it has to be distinctive, short, easy to remember and pronounce (if the mark is a word), should be appealing to the eye and should satisfy the requirements of registration. You have to make sure that your trademark is “one of a kind” and undertake search procedures to make sure of this fact.
A good example of how a trademark proves to be a good trademark for the company, can be seen in the case of Google, which is one of the most valuable brands in the World. The name “Google” is so distinctive and popular that it has been acknowledged as a word in itself by the Oxford English Dictionary, where the word’s meaning is “to search for information about (someone or something) on the Internet using the search engine Google”. Google as a trademark is valued at around 27% of the company’s market value thus establishing itself as the world’s most valuable brand.
But a trademark need not always be registrable. Under Sections 9 to 12, the Trade Marks Act, 1999, defines the marks which are not registrable under two grounds, namely: Absolute grounds for refusal under Section 9 and Relative grounds for refusal under Section 11 and then proceeds to state the circumstances in which they may be registered.
In India, letters, words, symbols, sound marks, and even smells can be trademarked and registered. In the landmark judgement of Yahoo! Inc v. Akash Arora & Anr (1999), the Delhi High Court held that a domain name served the same function as a trademark and was thus entitled to equal protection. The Bombay High Court in the Rediff Communication v. Cybertooth & Anr (2000), observed that a domain name is like a corporate asset to the company.
Since Trademarks are a type of intellectual property rights that last for ten years and can be renewed by payment of a renewal fee, it is but natural for these intangible assets to be protected by their registered owners. Under Section 28 of the Trade Marks Act, 1999, registration of a trademark shall give exclusive rights to the registered proprietor of the trademark in the use of the intangible asset, in relation to goods for which the trademark is registered. This Section also states that such registered proprietor is entitled to obtain relief in respect of the trademark by the procedure laid down by the Act. In case of infringement of rights of the proprietor of the mark, such proprietor has the right to file a suit for such infringement of his right and receive either damages, enforce an injunction, or receive account of profits (the person who unlawfully obtained profits during his infringement of the proprietor’s rights shall be compelled to give the proprietor these profits).
In DM Entertainment v. Baby Gift House and Ors, Daler Mehndi, the famous pop star hailing from Punjab, filed a suit against the defendants for infringing his right of publicity and using false endorsements under his name. His Company (the plaintiff company) stated that it had been assigned all rights in connection with his name and that the defendants by unauthorized and unlicensed use of any part of the reputation of the star in relation to goods or services would were leading the public to believe that the Star was associated with the defendants. Section 29 of the Trade Marks Act, 1999 (hereinafter called the Act), states that any mark or its usage in trade which is deceptively identical or similar to a registered trademark is deemed to be infringement, if such user of the trademark is not entitled or licensed to do so. Such an unauthorized user will be held liable for infringing the registered proprietor’s rights.
Thus, in the aforementioned case, it was held that the defendants had infringed upon the plaintiff’s rights and the plaintiff was entitled to a compensation of Rs 1 lakh.
In another case, Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories (1965), the Supreme Court held that there are certain differences between the action for passing off of a trademark (usage of an unregistered trademark by a person who is not the proprietor of the said trademark) and infringement of a trademark. Section 27 of the Act recognizes an important tenet of Common Law which states that one should not benefit from the labour of another and acknowledges the rights of the owner of the unregistered trademark. Section 29 and 30 deal with the infringement of the trademark by a person who is neither its registered proprietor nor a licensee authorized to use such trademark. The steps of protection taken against such violation of exclusive rights is highlighted in Sections 29 and 30.
Thus, the action for passing off of a trademark is a Common Law remedy while the action for infringement of a trademark is a Statutory remedy.
Trademark registration under the Act only has effect in India. For obtaining a trademark and the protection of it in foreign countries, it is necessary to use or register and use the trademarks in those countries. A separate registration may have to be made in each country as trademark registration and protection are territorial in nature. Also, you should be careful about the usage of the trademark before registration because in some countries like China, Japan, Indonesia, Continental Europe etc, the first person to register the trademark will be the one to get rights in relation to the trademark, rather than the person who first uses the trademark. Therefore, there is a high chance of your trademark being legally “stolen” by another, if such a person applies for registration even if you were the one using it earlier than him.
Registration of a unique and distinct trademark can turn such a brand into a corporate asset. Registration of your trademark protects you from people who willingly or unwillingly infringe your exclusive rights and if you fail to register your trademark and such trademark is registered by another, things may get rough for you if it is proved that you infringed on such a registered trademark. Therefore, think creative, register quick and use well!