What is a Trademark and Why You Need One?

Definition and Importance of Trademarks:

Trademarks in India are governed by the Trade Marks Act, 1999 and the Trade Mark Rules, 2017. A trademark is essentially a unique symbol, word, phrase, or combination that distinguishes a company's goods or services from those of others.

Benefits of Trademark Registration:

Legal Protection: Trademark registration provides legal protection against infringement and misuse by third parties. It grants the owner exclusive rights to the trademark and the ability to take legal action against unauthorized use.
Brand Identity and Trust: A registered trademark builds trust and credibility among customers, signaling professionalism and commitment to quality. It also creates a distinct brand identity, crucial for standing out in the market.
Asset Creation: Trademarks are valuable assets. They can be bought, sold, or licensed, adding to the financial value of your business.
Product Differentiation: Trademarks make it easier for customers to identify and choose your products over competitors, serving as an effective commercial tool.
Long-term Protection and Low Cost: Registration offers protection for 10 years at a relatively low cost, with the option for renewal.

Common Misconceptions and Risks:

Many startups delay trademark registration, not realizing the risks of someone else registering the same or a similar mark. This can lead to legal disputes and potential rebranding costs.

The Process of Trademark Registration in India:

Trademark Search: Conducting a thorough search ensures the uniqueness of your mark and reduces the risk of conflicts with existing trademarks. This can be done here: https://ipindiaservices.gov.in/tmrpublicsearch/frmmain.aspx
Trademark Class Selection: Identifying the correct class or classes for your goods or services is crucial since there are 45 different classes. For reference: https://ipindia.gov.in/writereaddata/images/pdf/classification-of-goods.pdf
Application Filing: After the search and class identification, an application is filed with the Trademarks Registrar. Application can be filed by the proprietor/agent/attorney at: https://ipindiaonline.gov.in/trademarkefiling/user/frmNewRegistration.aspx or offline.
Examination and Publication: The application is examined, and upon approval, published in the Trademark Journal for any objections. This procedure has to be completed within a period of 30 days.
Registration Certificate: If no objections are raised within 4 months, a registration certificate is issued.

Examples:

Apple Inc.: Apple's bitten apple logo is globally recognized. The trademark not only signifies the quality and innovation associated with Apple products but also distinguishes them from competitors. It's a classic example of how a trademark becomes synonymous with a brand's identity.
Nike and the Swoosh: Nike's "Swoosh" and its slogan "Just Do It" are among the most recognizable trademarks worldwide. These trademarks have become symbols of the brand’s identity, representing athletic excellence and inspiration.
McDonald's and the Golden Arches: The Golden Arches of McDonald's are a prime example of a trademark that's instantly recognizable worldwide. This trademark signifies more than just the company's products; it represents a global fast-food culture.
Coca-Cola: The unique script of Coca-Cola is a registered trademark that is recognized globally. The brand's consistent use of this trademark in marketing and product labeling has made it an iconic symbol in the beverage industry.
Here you can access the link of well known trademarks recognised in India: https://ipindiaservices.gov.in/tmrpublicsearch/well-known-trademaks-updated.pdf
Further, here is a link of words that cannot be trademarked: https://ipindiaservices.gov.in/tmrpublicsearch/prohibitedmarks.aspx

What happens in case of passing off of unregistered trademark?

“Nobody has any right to represent his goods as the goods of somebody else.” - Halsbury

Passing off is the act of using another person's trademark to represent that one's goods or services belong to the same trademark, i.e., suggesting that they have same quality, characteristics, goodwill and reputation. It is often confused that the right to take action against unfair use of trademark exists only against registered trademark. However, Section 27(2) of the Trade Marks Act, 1999 clearly suggests that it is present against unregistered marks as well.

Section 27: No action for infringement of unregistered trade mark. (1) No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark. (2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof.

It 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” noted in NR Dongre v. Whirlpool Corporation, 1995. Supreme Court has in Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd., noted that “the species of unfair trade competition or of actionable unfair trading by which one person, through deception, attempts to obtain an economic benefit ofthe reputation, which the other has established for himself in a particular trade or business”. So, right against passing off is independent of statutory right with holder. However, instead of protecting the interest of the owner of the trademark, the objective is to protect the interest of the consumer community.

However, one natural question that must come to your mind is with respect to Section 27(1), what does it mean and entail?

Section 27: No action for infringement of unregistered trade mark. (1) No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark.

We will be dealing with this issue in depth, considering the decisions by High Court and Supreme Court, if you have any other doubt, feel free to contact.