Trademark and its protection worldwide

Trademark and its protection worldwide

Intellectual Property LAW EXPLAINED
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Trademark simply means any sign or a combination of signs or symbols used to distinguish a good or service of one company (or establishment) from another one. There is a slight difference between a service mark and a trademark. Trademark only covers goods while the former covers services.

Examples of trademarks: Generally speaking a trademark is denoted by signs or symbols which are customary in nature and which can be used in trade in order to indicate its kind, quality, origin from other goods available in the market. Some of the examples of trademarks which are used are:

  • Word mark – Word mark is most commonly used as a trademark. These trademark use words, letters, numerical, names in many cases surnames etcetera. For example Calvin Klein, a famous cloth brand uses a wordmark as their trademark. Similarly Ford, named after Henry Ford.
  • Sound Mark –A sound mark can also be used as a trademark. For example a jingle can be used as a trademark by a company.
  • Figurative elements – Figurative marks are the trademarks that consist of just a figure or a figure combined with one or more words. Words in a specific font are also considered figurative. It can be both 2D as well as 3D.
  • Smell and texture mark –There are even smell and texture marks in certain countries which can be used as a trademark.
  • Hologram marks –A mark where a three-dimensional picture is shown using holographic technique, for example a rotating logotype.

Characteristics of a trademark

A trademark to be eligible for protection must essentially have two characteristics:

  • Distinctive –A trademark must have a distinctive quality. It means that the mark should be able to distinguish itself from another mark. It should not be descriptive. For example ‘apple’ which is a company which manufactures phones, computers and other digital devices has a trademark which is very unique as well as distinctive.
  • It should not be Deceptive – The mark should not be deceptive in any manner. It means that that the mark should not induce a false impression on the customer. A trademark which specifies some qualities of the product but in actually the product is not of that quality would be a deceptive trademark.

Signs that cannot be used as trademark

Signs with the following characteristics cannot be protected as trademark:

  • Those signs or marks which are misleading with respect to the origin of the product cannot be protected as a trademark.
  • Those signs or marks which misleads the consumers in relation to the nature or quality of the product to which the trademark relates
  • The signs or marks which are against public morality or order.
  • Those that are official signs or hallmarks indicating control and warranty adopted by them and any imitation from a heraldic point of view.

Thus for a trademark to be eligible for protection, it must be distinctive and should not be deceptive.

Protection of Trademark worldwide

It is essential to protect the trademark since it is a valuable intellectual property of the owner. It requires a lot of time and investment. To achieve protection in a particular country the trademark must be registered in the basic that is the home country of the applicant. Once the trademark is registered it is protected. Today, for protecting the due rights of the owners of trademarks in international arenas, there are four most significant and influential international trademark conventions or treaties in the entire world. These magnificent and globally reputed treaties are the following:

  • The TRIPS Agreement (Agreement on Trade Related Aspects of Intellectual Property Rights) – This international agreement which came into existence in the year 1995, is efficiently and prudently administered by the World Trade Organization (WTO), and has at present over 150 member countries of the world over.
  • Madrid Protocol –In spite of registering a trademark in separate countries, you can under the Madrid protocol file a single application to acquire protection in 100 countries altogether. This Madrid system is administered by the World intellectual property organisation (WIPO). It is a convenient and a cost effective procedure through which you can name the countries in which you want to sought protection. But it doesn’t mean that your trademark will definitely be registered, the ultimate decision lies in the hands of the countries. The Madrid system is just a procedure which a person can use for protecting his trademark in more than one country through a single application. It is important to know that before you file an international application the trademark must be registered in the ‘home IP office’ of the owner. In year 2013, India also became a member to this international treaty for trademarks to provide a unique opportunity to all domestic companies to protect their mark across the world jurisdictions by filing one application with one set of fees.
  • In addition to the Madrid system there are also regional intellectual property offices through which one can acquire protection in the countries of that region. For example – European union intellectual property office (EIPO), The Benelux office of Intellectual property (BOIP) and African intellectual property organisation.

Duration of Protection of a Trademark

The protection of a trademark under Madrid system is ten years and the trademark can be renewed for another ten years indefinitely. In India also under the Trade Marks Act, 1999 the protection for a trademark is granted for a period of 10 years. The registration is required to be renewed within 6 months before the date of expiry of the registration, i.e., 10 years from the date of the application or subsequent renewals.

This blog is written by Alok Dubey, Asian Law College.

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