Trademark-Your Brands' Right to be Known

Trademark – Your brands Right to be Known

Ever wondered how your brain forms an image of a particular product and associate it with its company or brand whenever you look at the logo or name printed somewhere? The answer lies within the question itself. A logo or name.

To the consumers at large the words ‘Barbie’, ‘Maggi’ and ‘Band-aid’ represent toys, instant noodles and adhesive bandages respectively. However, these words are actually trademarks of their respective brands. It is rather fascinating as to how ingrained these brand names and logos are with the product, to an extent where one instantly associates the product with these popular trademarks. In this backdrop and the ever-increasing brands entering various markets, a sound understanding of trademarks, its different kinds and how it can help one create a strong brand image with consumers gains significance.

A trademark is nothing but an intellectual property in the form of a logo, design, name or expression that is unique and distinct. A brand’s unique trademark helps to identify and distinguish its products with the similar products of other brands. Trademarks may be of several kinds based on the characteristic they represent. For instance, product mark/service mark is used to represent the origin of a product or service, a collective mark is used by products as well as group of individuals to inform the public about the characteristic features of a product/service collectively, among others.

Why does your brand need a Trademark?

Helps smaller businesses gain recognition and establish legal ownership over their brand- Individuals often start their business on a small scale with a view to expand but in achieving their larger objectives they often forget to create and/or register their trademark. If small businesses create and register their trademarks during the initial stage of the business itself, it will not only help them gain better recognition among their target consumers but will also help in establishing legal ownership over their brand and prevent others from using the same trademark.

Creation and Protection of Identity of Brand- A Trademark not only helps create an identity of a particular brand but also protects it. It may be in any form whether as a logo or a wordmark. When a person purchases a product of a company, he identifies the company with its unique logo or name. The different colours and design of a logo, spelling and pronunciation of the wordmark makes a trademark unique and this uniqueness helps protect a brand as consumers are more likely to repurchase the products of the brand they have used and recognise rather than the one they have never heard of.

Communicates about your business- Trademarks act as an effective communication tool for a brand and the products and/or services being offered under the brand. Once a trademark becomes well-known, people can easily associate the products and/or services with the brand that is offering them. Furthermore, trademarks can be obtained for slogans as well. A distinct and creative word or words conveying the nature of goods or services being offered can be word marked and is often used by businesses to convey their value or visions statements to customers. Classic examples of effective slogan trademarks are that of NIKE’s JUST DO IT and McDonald’s ‘I’m Lovin It’.

Helps in building brand reputation in market- When a trademark has been used for a long time, it creates a reputation for the company or brand in the market. Consumers prefer purchasing products of a company or a brand that has a good reputation in the market.

Trademark is Valuable Asset for the brand- A well-known trademark becomes a valuable asset for the brand as it paves the way to expand business from one industry to another. Consumers who are loyal to one brand are more likely to try and purchase the other products and/or services offered by the same brand.

Benefits of Trademark Registration

When a trademark is registered it safeguards the rights of the brand. Some of the benefits of registering a Trademark are as follows:

Protects the business from legal action- When an individual uses a trademark that is not registered and later finds out that another person or company is using a similar trademark and has already registered it, there is a high probability that the person or company who has a registered trademark may take away the business of the individual whose trademark is not registered by suing him for infringement of trademark. In such a case if the trademark of the first individual was registered, he would not have to worry about possible loss of business due to any legal action by other brand for infringing the trademark.

Provides exclusive rights to the owner- An individual can apply for registration of trademark for his products and/or services under more than one class. Once, the trademark gets registered, the owner gains sole ownership on the trademark and can prevent others from using it under the same class or classes. It grants an exclusive right to the owner to sue for any unauthorized infringement of their trademark.

Protection of trademark for 10 years- Once a trademark is registered, the registration remains valid for a period of ten years. An individual or a company can apply for renewal of registration of their trademark in a prescribed manner as per the provisions of the Trademarks Act, 1999.

Ease of international registration of trademark- If an entrepreneur who has a well-established trademark that is registered in India wishes to expand his business globally, he can easily get his trademark registered in a different country as registration in India along with goodwill earned over the years by using the trademark will lay a strong foundation for getting registered into another country.

Helps in gaining customer confidence- Customers prefer brands who have a registered trademark as registration of trademarkrepresents the reputation and excellence of a product or service being offered by a particular brand. This in turn increases customer confidence and recognition in the market and aids in the creation of loyal customers who prefer using products and services of a brand with registered trademark over other brands.

Owners of registered trademark can use ® symbol- Registering a trademark gives exclusive right to the owner to use the ‘®’ symbol along with their trademark. This ‘®’ symbol indicates that the trademark has been registered and no person other than the registered user can use this trademark for their products or services.

What’s in a name? A lot!

In a recent case a fast-food services entity was running its business under the name “Dominick Pizza” with a logo and name deceptively similar to the logo used by the popular pizza giant “Domino’s Pizza”. On finding out the similarity between the name and logo between the two entities, Domino’s Pizza moved the Delhi High Court against Dominick Pizza for infringement of their trademark. The Delhi High Court observed that not only the products sold by both the entities are similar but their names are also phonetically identical along with a deceptively similar logo. The High Court held that, “Running an eating house using a mark which is deceptively similar to a reputed mark does not speak well for the enterprise concerned. The intent to capitalise on the reputation of a known and established brand by using a mark that is deceptively similar to the mark used by the brand, can, in a given case, give rise to a legitimate apprehension of quality compromise by the imitator. Courts have, therefore, to be vigilant in ensuring that, where the marks relate to consumable items or to enterprises such as hotels, restaurants and eating houses where consumable items are served to customers, such imitative attempts are not allowed to go unchecked.” The Delhi High Court permanently restrained Dominick Pizza from using its trademark in future.

Cases like this lay emphasis on the importance of creation and registration of trademark.

Still not convinced? Let’s take a glance at some landmark judgements!

Coca Cola v. Bisleri International Private Limited and Ors., 2009 SCC OnLine Del 3275

This case arose over the alleged misuse of the Trademark “Maaza”. Bisleri, the Defendant, entered into Assignment deed with the Plaintiff for its Trademark “Maaza”. In 2008, Coca Cola filed for registration of “Maaza” in Turkey. When the Defendant, Bisleri, came to know about the same, the agreement was repudiated as Coca Cola had breached its terms of use which were limited to India alone. The Plaintiff contended that the Defendant had disregarded the complete transfer of IP rights in favour of the Plaintiff. Furthermore, the legal notice served upon the Plaintiff by the Defendant revealed that the Defendant plans on using the trademark “Maaza”. During the course of this matter, it was revealed that the Defendant had also participated in activities involving the use of Trademark “Maaza” with Third Parties.

The Delhi HC decided in favour of the Plaintiff and held that Bisleri was mistaken in its understanding of the Assignment Deed wherein, it was under the impression that the rights on “Maaza” have been sold to the Plaintiff only in respect of India. The Court issued an injunction ordering the Defendant to cease all its works in relation to the Trademark “Maaza”.

With regards to business and startups as well as freelancers who routinely engage in licensing and assigning the IP rights over their property, it is pertinent that the agreements entered are highly specific with reference to the licensing and appointment as well as the import, export and usage in the online and offline markets.

Starbucks Corporation v. Sardarbuksh Coffee & Co. & Ors., CS (COMM) 1007/2018, on August 1, 2018

This case revolves around two companies selling coffee under their respective brands. Starbucks is a famous coffee joint having a well-established reputation and market footing formed over years while Sardarbuksh is also a coffee joint that came into the business only in the year 2015. Starbucks found that Sardarbuksh is running their coffee business with a name and logo deceptively similar to Starbucks. Not only were the names and logos of the two companies were similar but also the colour scheme used in the two logos was same.

In 2017, Starbucks issued a letter of demand to Sardarbuksh to change its colour scheme to which Sardarbuksh agreed and changed the colour scheme to black and yellow. Later on in the year 2018, Starbucks proceeded with a suit against Sardarbuksh in the High Court of Delhi for using deceptively similar wordmark. The Delhi High Court advised Sardarbuksh to go for new branding. After this verdict, Sardarbuksh agreed to the terms and conditions and changed its name to Sardarji-Bakhsh Coffee & Co.

New businesses and smaller companies who are in the process of creating and registering their trademarks must note that even phonetical similarity of one’s trademark to that of another may lead to an infringement of intellectual property rights of a brand. Hence, it is important that not only does a brand should have a unique and distinct logo or design but it should also sound phonetically different from other wordmarks that are already registered.

Conclusion-When a brand is sued for infringement of trademark, the court always looks at who registered the trademark first. The brand who got their trademark registered first are more likely to win the lawsuit for infringement of trademark. Even if your business and brand are small and not well-known right now, registering your trademark gives your brand an edge over others for the reasons elucidated above.

So go ahead, create your trademark and register it!

Adv. Yaminee Verma is a Master's student pursuing her LLM in Intellectual Property and Information Technology Laws with the University of Mumbai.

Adv. Shreya Yadav is a Legal Associate at V.A. Law Offices and keen on exploring the different facets of Intellectual Property Rights.