Trademark
Sign capable of distinguishing the goods or
services produced or provided by one
enterprise from those of other enterprises.
What can be a Trade Mark
• A trade mark is not limited to a sign or words
• Can be:
– Words
– Letters
– Numerals
– Drawings
– Shapes
– Colours
– Logo
– Audible sounds
Functions of Trademark
Enable customers to identify a product (a good or service) of a
particular company – distinguish it from other identical or similar
products provided by competitors.
Marketing tool – building brand image and reputation.
Licensed – a direct source of revenue through royalties.
Crucial component of franchising agreements.
Valuable business asset.
Encourage companies – invest in maintaining or improving
product quality.
Useful – obtaining financing.
Consumers develop an emotional attachment to certain
trademarks, based on a set of desired qualities or features
embodied in the products. Eg: SBI symbol.
Selection or creation of a trademark
- Decides marketing strategy of your business.
1. Fulfillment of all the legal requirements
2. Do a trademark search
3. Easy to read, write, spell and remember
4. No undesired disapprovals
5. Arbitrary marks: Require heavy advertising. Trademark
ELEPHANT for marketing mobile phones.
6. Suggestive marks: Hint about attributes of the product.
Trademark SUNNY for marketing electric heaters.
Rejection of an application for trademark registration
1. Generic terms: CHAIR to sell chairs.
2. Descriptive terms: Mark SWEET likely to be rejected for
marketing chocolates.
3. Marks considered to be contrary to public order or
morality.
4. Flags, official hallmarks and emblems of states and
international organizations are excluded from
registration.
Registering a trademark
1. The applicant – duly completed trademark application form:
The contact details of your company,
A graphic illustration of its mark,
A description of the goods and services.
Pay the required fees.
2. The Trademark office
1. Formal examination – administrative requirements or
formalities
2. Substantive examination – verify – complies with all the
substantive requirements
3. Publication and opposition
4. Registration: Registration certificate – issued – generally
valid for 10 years
5. Renewal
Trademark agent – Relevant IP office – list of officially
approved trademark agents.
Time required for registration of trademark – 3 months
to 2 years.
TM or ®
Convenient way of informing others that a given sign is
a trademark, thus warning possible infringers and
counterfeiters.
The ® symbol is used once the trademark has been
registered
TM denotes that a given sign is a trademark
SM is sometimes used for service marks.
Costs – trademark creation, protection and use
1. Creation of a logo or word (outsource)
2. Conducting a trademark search
3. Registration process
4. Professional trademark agent – assist in registration
process.
Trademark search
- National trademark office
- Commercially operated trademark database
Types of Trademark
1. Trade marks: Marks used to distinguish
certain goods as those produced by a specific
enterprise.
2. Service marks: Marks used to distinguish
certain services as those provided by a specific
enterprise.
Types of Trademark
3. Collective marks: Marks used to distinguish goods
or services produced or provided by members of
an association.
4. Certification marks: Marks used to distinguish
goods or services that comply with a set of
standards and have been certified by a certifying
authority. Eg: Monte Carlo TM of Nahar Co. uses
Woolmark on its woollen makes.
5. Well known marks: Marks that are considered to be
well-known in the market and as a result benefit from
stronger protection.
WONDERCOLA is the famous trademark of a soft drink.
Wondercola Inc. would then benefit from automatic
protection in those countries where well-known marks
enjoy stronger protection and where the mark is well-
known for soft drinks.
Using Trademarks
Can u register a trademark without having used it?
You may apply for registration before you have used
the trademark but some countries will not officially
register it until you have shown proof of use.
How should you use trademarks in advertising?
If your mark is registered with a specific design or font,
make sure that the trademark is used exactly as it
is registered.
Monitor its use closely as it is crucial for the image of
your company’s products.
Can your company use the same trademark for different
products?
Extending an existing brand to new products enables the
new product to benefit from the image and reputation of
the mark.
However, the use of a new mark, more specific and relevant
to the new product, may also prove advantageous and
enable the company to target the new product to a
specific customer group (e.g. children, teenagers, etc.)
or to create a specific image for the new product line.
Many companies also choose to use a new brand in
conjunction with an existing brand (NUTELLA®
generally used with FERRERO).
Licensing of trademark to other
companies
The trademark owner retains ownership, agrees to
the use of trademark by one or more other
companies. This is done on payment of
royalties and involves the consent of the
trademark owner, which is usually specified in
a formal licensing agreement.
Licensing of trademark to other
companies
The licensor often retains some degree of control over
the licensee to guarantee that a certain quality is
maintained. Eg: A restaurant selling chicken meals
operates under the trademark NANDO’S.
NANDO’S imparts its knowledge and experience to its
franchisees and retains the right to supervise and
control local franchises. As a crucial component of
the franchising agreement the franchisees will also
be authorized and obliged to use the NANDO’S
trademark.
It is increasingly possible to sell or assign a trademark.
It may be required to deposit a copy of the
agreement, or parts of it, at the trademark office.
PROTECTION vs. ENFORCEMENT
• Protection refers to obtaining of legal rights
through such as through creation, registrations
and use of trademarks & copyright
• Enforcement refers to checking third party
infringers by exercising such legal rights & taking
appropriate action against them
WHY ENFORCE YOUR IP
RIGHTS?
• Helps in building & maintaining your BRAND
VALUE
• Maintains the aura of EXCLUSIVITY in the minds
of consumers
• Deters infringers and counterfeiters
• Essential if your trademark is to be the source
identifier for your business
STAGES OF TAKING ENFORCEMENT
ACTIONS
• Identify the nature of counterfeiting in the
market:
– Manufacturers/Printers/Wholesalers/Retailers
– Kinds of rights that are being infringed - trademark
and/or copyright
Conduct intensive investigations on these targets
to determine volumes of infringing goods and
collect evidence for taking further action -
sample infringing product, visiting cards, other
printed matter
STAGES OF TAKING ENFORCEMENT
ACTIONS
• Decide on strategy to adopt for each target
based on:
– Kind of entity - wholesaler, retailer,
manufacturer
– Volume of infringing goods
– Kind of rights being infringed
DIFFERENT STRATEGIES
• Issuing cease & desist letters/caution notices
• If infringement is willful and location of the
infringing activity is known, surprise action – a
search and seize order – conduct a raid without
prior notice to allegedly offending
company/person.
• Infringer may be compelled by the judicial
authorities - identity of persons involved in
production and distribution of infringing goods or
services and their channels of distribution.
DIFFERENT STRATEGIES
• The judicial authorities may order for
destroying infringing goods and materials.
• Negotiation & undertaking
• Filing of a civil suit/criminal complaint
RELIEFS THAT CAN BE OBTAINED IN A
CIVIL SUIT
• Damages: Based on estimated lost profits/lost
sales/loss of goodwill, etc.
• Rendition of accounts of profits earned from
sales of infringing goods
• Delivery up of infringing goods
Example of a successful civil
enforcement action
• 3 suits filed by Adidas
Saloman AG in the Delhi High
Court against counterfeiters
• At the initial stage, infringing
goods were seized by the
Local Commissioner
• Cases were decreed recently
& damages of Rs. 15 lakhs
was awarded to Adidas
Saloman
Examples of successful enforcement of
trademark rights by Indian textile houses
• Virendra Dresses v. Varinder Garments-
Defendants restrained from using “Varinder” as
part of their trade name
TRADEMARK CRIMINAL
ENFORCEMENT
• A cognizable, bailable criminal offence
• Punishment extends from 6 months to 3
years
• Fine which may extend to Rs. 1000/-
Example of a successful criminal
enforcement action
• Criminal raids
conducted in 2003 by
the Economic Offences
Wing, Delhi Police
upon a complaint
• Printers printing
counterfeit stickers &
labels- Levi’s, Adidas,
Lee, Timberland
