Every company or brand ever made was initially established to take over the world with its ideas and creativity. For an idea to survive the whirlwind of competitors, the makers and owners need to protect their hard-earned work from being emulated. To do so, they need to register such logos, brands or symbols that serve as their unique selling point. However, not all trademarks registered are valid around the world. To understand the framework of trademarks and their registration, let us analyze brand borrowing and how to avoid it.
BRAND BORROWING
Once you register your trademark it protects you in the country of your registration only. There may be international infringement since trademarks are not valid everywhere. One such famous case explains how the validity of a trademark works.
In one of the recent suits filed by TATA Sons against foreign defendants Hakuna matata Tata Founders, seeking a permanent injunction against the usage of their brand name TATA under which their cryptocurrency TATA coin is made available to the public. There were quite a few points of consideration in this case under Indian jurisdiction.
A. Was the trademark ‘TATA’ registered in India?
B. Was there an infringement of the trademark?
C. Was there an intention to target the Indian market?
D. Was the infringement diluting the goodwill of the plaintiff in any way?
Before answering these questions let’s understand the framework of Trademark and how to protect yours.
Copyrights and Trademarks
Different creations and ideas can be protected through copyrights and trademarks. Copyrights protect creative and intellectual works like music, art, history, software codes etc, whereas, trademarks protect company names, logos and phrases. They are two different legal protections governed by completely different governing bodies. In the U.S trademark falls under the U.S Patent and Trademark Office and copyrights are granted by the U.S Copyright Office. In India, copyrights are governed under Copyright Act 1957 and trademarks under Trade Marks Act 1999.
Scope of trademark: an individual, business entity or any legal entity can own a trademark. A trademark once registered in India is valid for 10 years and can be renewed further.
Scope of Copyright: it provides exclusive rights to the creator of the work to use or distribute their work as per their discretion. For an individual owner, the term of the copyright is for its lifetime plus 60 years, whereas for a non-individual owner it may be up to 60 years from the date of publication.
Trademark is a unique identifier given to a business to serve as a unique selling point consisting of numbers, a logo or a combination of words. Copyrights give you exclusive rights to your creation. It helps to build credibility and recognition in the market. It protects copycats and counterfeit products.
To make a business economically worthwhile, a trademark and copyrights play a vital role to build a company’s image and brand value, consumers rely on a trademark and it helps to increase sales. These visual cues help distinguish one enterprise’s goods and services from the other.
Rights provided by Trademark
Trademark is a unique identifier given to a business to serve as a unique selling point consisting of numbers, a logo or a combination of words. It helps to build credibility and recognition in the market. It protects copycats and counterfeit products.
Registering the Trademarks confer an exclusive right to use the trademark explicitly by the owner. It provides legal certainty.
Registering Trademark and its International validity.
Trademarks are distinct in each country or jurisdiction in which they are obtained. Different jurisdiction has different governing policies that recognize and protect trademark rights.
Trademarks like brand names and logos do not give protection universally. There is no universal trademark that is applicable in all countries. However, you can file a trademark with a group of countries. Few international trademark registration systems like the Madrid Protocol mark your trademark registration in all the countries within that group.
Let’s delve more into the International Trademark registration system.
International Trademark Registration System
On July 14, 1967, a constituent instrument was signed and World Intellectual property Organisation (WIPO) came into existence. It entered into force in the year 1970 and was later amended in the year 1979. It is one of the most specialized agencies of the United Nations Systems of organisations.
WIPO’s main objective is to promote the protection of intellectual property worldwide. It acts as a global forum for intellectual property services. It’s a self-funded agency and consists of about 92 members. WIPO has entered into many treaties that fulfil different objectives with its members. Madrid Protocol is one of the designed treaties that secures international registration marks in all its contracted countries. One can register its IP under WIPO online just by filing the application form with the national/regional trademark office and paying the required fees.
Apart from WIPO, there are other groups under which you can file the trademark:
a. 15 countries group, ‘The European Union
b. In several South American Countries, ‘The Andean Pact’
Registering your trademarks with these groups gives you an edge to protect your trademark in several countries. Any changes or renewal applies to all countries in the group.
Trademark Infringement
Trademark is a mark that graphically represents and distinguishes the goods and services of one enterprise from the other. Once the trademark is registered, no one has the authority to use the trademark other than the owner. The owner has the exclusive rights to use the trademark subject to certain conditions.
However, sometimes people may use or take undue advantage of the said trademarks without the permission of the owner of the licenses. This is an infringement of the trademark.
A registered trademark is deemed to be infringed in the following cases:
a. Mark in dispute is identical or similar to the registered trademark about the same or similar goods and services.
b. If such a similar mark creates a false impression of being associated with a registered trademark in the minds of the people.
c. The mark is used for packaging and labelling other goods or paper without authorization of the registered user.
d. If the registered mark is used as a part of a trading name or business concern for goods and services.
e. If the mark is advertised and takes unfair advantage of or is detrimental to the character and reputation of the registered mark.
There is a perfect case for one such infringement.
APPLE INC VS APPLE CORP
The famous trademark battle between two major institutions was settled after decades of dispute. Apple Corps Music was founded by the Beatles 8 years before Apple Inc, was founded by Steve Jobs. The Beatles sued the latter and Steve Jobs paid a cash settlement and agreed not to enter the music business. However, after the introduction of iTunes, Apple Inc was sued again and was resolved when Jobs agreed to purchase the trademarks right from Apple Corps and then sublet them again.
Answering the questions in the case filed by TATA mentioned above:
a. Tata is registered in India and has cryptocurrencies available to the public under the brand name TATA.
b. The accessibility of websites of the defendants within the jurisdiction of the court cannot intend to infringement outside the country. There was no reference to India on the defendant’s website to attract purchasing of cryptocurrencies.
c. There was no conscious targeting of the Indian consumer base by the defendant.
d. 50 Indian visitors each day to the defendant’s website was a small number and neither the followers were selling nor targeting the Indian market, hence it wasn’t diluting the goodwill.
Courts’ contention: ‘intent to target’ is a mandatory requirement. It was missing from the suit filed by TATA sons, hence TATA was unable to secure an injunction against the Hakunamata.
Is registering a trademark a viable option?
There is a high risk involved with unregistered trademarks. It might be a cumbersome process but registering the mark helps to protect the business nationally and internationally.
Legal Actions against Infringement of Trademarks
Trademark gives a business a selling point because it helps the consumers to recognize the source of the product, its quality and their purchasing decision. Infringement of the same trademark can cause problems and deceive the consumers.
How to resolve the infringement of the Trademark:
1. The first step to resolving the infringement case is to issue a desist letter to the party infringing the trademark.
2. If that doesn’t stop, the next step should be to file a suit to stop them. However, the court shall not rule in your favour as in the case of previously mentioned Apple Inc vs Apple Corps. The court ruled in favour of both the companies using the names with a condition that Apple Inc shall not get into the music industry.
When there is a trademark infringement, criminal and civil action can be brought about. Infringers can be prosecuted. Authorities are empowered to Suo moto conduct raids and seizure operations by the court.
How to avoid infringement of Trademarks?
1. We should design our trademark with originality.
2. Register our trademark
3. We should also check the already registered trademarks.
4. Display the registered mark to indicate its association with the product or services.
5. We need to monitor the misuse of our trademark and look for similarities in the symbols or names that can confuse the consumer.
Defending a Trademark:
The most important step is to consult the trademark lawyer to advise you on the legalities of infringement.
1. Reply to the legal notice received for trademark infringement.
2. Reply to the infringement case filed by the trademark owner
3. Prepare your case to defend your trademark in court.
4. File a counter case against the plaintiff to establish that the trademark was registered before the other trademark.
Remedies if the infringements are successfully proved
a. Injunction against the use of the trademark
b. Handing over the profits and accounts.
c. Make the damages good
d. Appointing the commissioner for sealing the infringed materials and accounts.
Trademark protects your unique brand!
Registering trademarks helps to build trust and goodwill for your brand. It creates a symbol of differentiation between other products. It protects you from infringements. Establishing a logo or a brand name requires registration within countries, and before jumping the gun a complete structured detail about the different intellectual property must be read.
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[A1] If I have to protect or even remedy an issue of trademark/copyright – issue is when you are copyrighted in india and not registered outside – if someone copies your brand trademark outside the country – how can you secure or remedy when something happens like this?
[A2] WIPO – missed – very important point was missed – this is a body under which a lot of countries are registered – so shouldn’t have been missed – Madrid Protocol is also under WIPO
[A3] Should instead focus on legal actions against “international” infringement of trademarks/copyrights
[A4] This is theoretical – let’s focus on practical things – how do I fight, what happens to the other person, how to do I prepare to win