• Surangama Sharma

Why do you need a Trademark for your Brand? Everything you need to know.

As the renowned brand designer and founder of brand consulting firm Landor, Walter Landor said,

“products are made in a factory, but brands are created in the mind”.


Thereby, putting emphasis on the importance of one's mind, i.e., the intellect. This thought resonates well under the Indian Intellectual Property Law regime under the garb of the ‘Trade Marks Act, 1999’ which deals with the mechanism of registration, protection of trademark, and prevention of fraudulent trademark. Thus, the trademark law intends to protect a person’s ‘intellectual property’, and at the same time, it also provides for the rights acquired by registration of a trademark, modes of transfer and assignment of the rights, nature of infringements, penalties for such infringement and remedies available to the owner in case of such infringement.


In simple words, trademarks are special unique signs that are used to identify goods or services from a certain company. In essence, a trademark refers to a company’s branding. One of the best benefits of a trademark is brand recognition. They can be designs, pictures, signs or even expressions. It is important because it differentiates your products from the competitions. It can be exclusively associated with your brand or product. Trademarks are classified as intellectual property and therefore is protected from infringement. Trademarks eventually started to play an important role with the onset of industrialization, and they have since then become a key factor in the modern world of international trade and market-oriented economies.


Thus, a trademark is essentially any sign that separates a particular enterprise’s goods from those of its competitors.


A trademark may be designated by the following symbols:

(the "trademark symbol", which is the letters "TM" in superscript, for an unregistered trademark, a mark used to promote or brand goods)- This symbolises that the trademark has not yet been registered, but an application for the same is pending.

(which is the letters "SM" in superscript, for an unregistered service mark, a mark used to promote or brand services) -This symbolises that the trademark has not yet been registered, but an application for the same is pending.

® (the letter "R" surrounded by a circle, for a registered trademark)- This symbolises that the trademark is officially registered, that infringement of any kind by a third party will be punishable by law.


Objective of Trademark Law


The object of trademark law has been explained by the Supreme Court in Dau Dayal v. State of Uttar Pradesh [1], in the following words:


“The object of trademark law is to protect the rights of persons who manufacture and sell goods with distinct trademarks against invasion by other persons passing off their goods fraudulently and with counterfeit trademarks as those of the manufacturers.”

The trademark law in India is a ‘first-to-file’ system that requires no evidence of prior use of the mark. A trademark application can be filed on a ‘proposed to be used' or 'intent-to-use' basis or based on use of the mark. The term ‘use’ under the Trade Marks Act, 1999 has acquired a broad meaning and does not necessarily mean the physical presence of the goods in India. The presence of the trademark on the Internet and publication in international magazines and journals having circulation in India are also considered as use in India.


Importance of Trademarks - What is the Need?


The growing importance of trademarks in commercial activities is due to the increased competition among companies undertaking trade in more than one citites, states or countries. Trademarks have been used to simplify the identification by consumers of goods or services, as well as their quality and value. Thus, a trademark may be considered as a tool of communication used by producers to attract consumers.


There are various reasons that could be ascribed to the importance of having and legally protecting a trademark, some of them have been listed as follows-

  • Protection against unfair competition, counterfeiting, and piracy – The owner of a registered trademark can make use of his legal rights to file suit against any party using the registered trademark without prior approval or permission. According to Section 31 of the Trade Marks Act, registration of trademark is an evidence of its legal validity. Furthermore, the registered trademark ® is legally strong to start official actions, document a claim against the violators, and even seek damages or remuneration if under any conditions his brand name rights are encroached or misused.

  • Trademark is forever - Trademark once registered by a firm can last with them for perpetuity given that its registration is renewed after every 10 years.

  • A Communication Tool/ Brand Recognition- A trademark establishes a connection between the customers and the products of an enterprise. The consumers of a particular product associate its quality and features with the trademark that is used to market the product. At the same time, it also creates goodwill for the brand.

  • Valuable Assets - Trademarks are intellectual property and carry a value associated with the products they represent. Once a trademark is registered, it becomes an intangible asset that can be traded, franchised, commercially contracted, and distributed.


Rights Available to the Owner of Trademark


While registration of a trademark is not compulsory, it offers better legal protection for an action for infringement. As per Section 17 and Section 28 of the Act, the registration of a trademark confers the following rights on the registered proprietor:

  1. It confers on the registered proprietor the exclusive right to the use of the trademark in relation to the goods or services in respect of which the trademark is registered. If the trademark consists of several matters, there is an exclusive right to the use of the trademark taken as a whole. If the trademark contains matter common to trade or is not of a distinctive character, there shall be no exclusive right in such parts.

  2. It entitles the registered proprietor to obtain relief in respect of infringement of the trademark in the manner provided by the Trade Marks Act, 1999 when a similar mark is used on- (a) same goods or services, (b) similar goods or services, (c) in respect of dissimilar goods or services.

  3. Registration of a trademark forbids every other person (except the registered or unregistered permitted user) to use or to obtain the registration of the same trademark or a confusingly similar mark in relation to the same goods or services or the same description of goods or services in relation to which the trademark is registered.

  4. After registration of the trademark for goods or services, there shall not be registration of the same or confusingly similar trademark not only for the same goods or services but also in respect of similar goods or services by virtue of Section 11(1) of Trade Marks Act, 1999. Moreover, after registration of the trademark for goods or services, there shall not be registered the same or confusingly similar trademark even in respect of dissimilar goods or services by virtue of Section 11(2) in case of well-known trademarks.

  5. Registered trademark shall not be used by anyone else in business papers and in advertising. Use in comparative advertising should not take undue advantage of the trademark. Such advertising should not be contrary to honest practices in industrial or commercial matters. The advertising should not be detrimental to the distinctive character or reputation of the trade mark.

  6. There is a right to restrict the import of goods or services marked with a trademark similar to one’s trademark.

  7. There is a right to restrain the use of the trademark as trade name or part of trade name or name of business concern dealing in the same goods or services.


Conclusion


To sum up, trademarks promote and encourage initiatives and enterprises worldwide by rewarding the owners of trademarks with recognition and financial profit. Trademark also offers protection against unfair competitors, such as counterfeiters, who use similar distinctive signs to market or sell inferior or different products or services. The trademark system enables people with intellect and enterprise to produce and market goods and services in the fairest possible conditions, thereby facilitating international trade.


Our key remark - There is never a wrong or right time to get a registered trademark for your brand, services or goods. Having said that, it is further to be noted that under the current competitive scenario where every day you are facing tougher competition, it is absolutely correct to say "the earlier the better". So just don’t wait for some mushroom to ruin your goodwill in the market and go away with what your brand deserves.


[1] AIR 1959 SC 433.

Authors: Adv. Surangama Sharma, Senior Partner, S&D Legal Associates, and Ms. Ayushi Srivastava, Paralegal, S&D Legal Associates.


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