Concept of trading on trademarks
From Advocatespedia, The Law Encyclopedia
A trademark is a particular sign or a symbol or a expression which separates a particular product or service from other product or service of the same category. Trademarks are also used to identify services which is known as service marks. A trademark can be owned by either an individual or business organisation or any legal entity. It is being usually located on a packaging of a product or service or a label of it or a voucher or on the voucher itself of the product or the service. When we talk about the company or a legal entity than for the sake of its identity trademarks are often displayed on the company buildings.
It has been reported that the person who made the swords in the Roman Empire was the first user of trademarks. Then the use of “Lion” trademark came into existence which was used by “Lowenbrau” since 1383. The first legislation regarding trademark was passed in the reign of Henry III in 1266 by Parliament of England which ordered all the bakers of that time to use distinctive marks for the breads sold by them. The first official law regarding the trademark was brought in force in late 19th century. The first comprehensive trademark system in the world was passed in France in the year 1857with the name of “Manufacture and Goods Marks Act “. In Britain it was the criminal offense to use another’s trade mark with the intention to defraud. The first official formal registration of trade mark was done in UK Patent Office in 1875 after the “Trade Marks Registration Act” was passed. While the registration of every mark started in 1867 from January 1 and registration was considered to comprise Prima Facie of evidence of ownership.
The first registration system was set up in the United Kingdom under “Trade Marks Act 1938” based on the “intent to use” principle. This act also told about an application publishing procedure and also about the expanded rights of the trademark holder which include the barring of trademark use in almost all the cases where confusion arises. This act serves as a model for all the similar legislation elsewhere. The oldest registered trademark are “The Bass Brewery’s Label” , the trade mark of Averill Chemical Paint Company with words “Economical,Brilliant”.
ELEMENTS OF TRADEMARK
Trademarks are the elements of a company’s marketing and branding. This system allows for businesses to register their distinct brand, and protect that distinctiveness. Elements of trademark are-
1. Trademark Clearance Search
When we talk about the trademarks , the court system does not take any ignorance as an excuse. Even if the business has infringed any existing trademark the financial loss can be dire even if it is not done intentionally by the business. Not only the trademark holder’s legal fees is paid by the infringing company but also the court will award damages. Also the infringing company can be forced to destroy all products bearing the trademarked material.
A business can be protected from this situation by hiring a qualified intellectual property lawyer to conduct a trademark clearance search and then analyse the results.
2. Trademark Registration
Once the business has determined that their concept is safe to use, the next and most important step is protecting the concept by registering a trademark. The lawyer appointed by the business handles the bulk of this filing. Then the work is forwarded to trademark office where everything is reviewed and then the result is seen that whether the trademark is accepted or rejected. Sometimes when the process is complex, then it takes several months or more in involving multiple filings.
3. Trademark Disputes
Once a business acquires a trademark, it is important to monitor and defend the distinctive branding that has been created. A business should discover a case of trademark infringement, the next step is to inform in the trademark office and begin taking legal steps to stop the infringing company’s activities and remove offending materials from the market.
LEADING CASES OF TRADEMARK
1- Worldsport Networks Ltd. V. Artinternet S.A. [2000 U.S Dist. LEXIS 17 (E.D. Pa. 1/3/2000)]
Defendant, a French organisation registered a variety of domain names including the WorldSport trademark. Plaintiff, an Irish organisation sued to enjoin this behaviour. Defendant admitted that they had no right to use the mark and stipulated that their use of the mark constituted infringement. The court initially ordered that NSI not allow anyone to register a name similar to the one that was determined to infringe. Order was challenged by NSI claiming that it did not have the resources to evaluate every requested domain name for possible similarity. In January 3, 2000 order, the court once again modified its early decision. NSI can no longer responsible for preventing similar registrations by the defendants. Instead if the defendants register a domain name they are required to file with the court and with the plaintiffs a report setting forth that the register does not violate the court’s order.
2- WWE v. Reshma Collection (October 15 2014)
The Delhi High Court held for the first time in India that due to advancements in technology and the changing ways of conducting business online, it is possible for an entity to have a virtual presence in a place some distance from its physical presence. The availability of website transactions is virtually the same thing as the seller having shops in that place in the physical world.
3- Bloomberg Finance LP v Saklecha [2013(56) PTC 243 (del)]
The court found that a trademark is diluted when its uniqueness is lost owing to unauthorised use in relation to products that are not identical or similar to the rights holder’s product. The court held that even marks which do not qualify as well enjoy anti-dilution protection.
4- Caterpillar Inc v. Mehtab Ahmed [2002 (25) PTC 438 (del)]
The court recognised trademarks as either invented, arbitrary, suggestive, descriptive or generic- holding that no evidence of use is required to register or protect the first three types.
5- Bajaj Auto Ltd. v TVS Motor Co Ltd [CS (OS) 1744/2013]
All courts and tribunals hearing IP cases should proceed on a day-to-day basis and final judgement should be given within four months of the date that the suit was filed.