Our personal experience

It has been quite an interesting journey for all of us since we started our career into intellectual property.  Each of our lawyers encounter on a day to day basis clients from different levels and parts of society involved in different businesses.

Counseling and brainstorming a client is quite a task which consumes seventy percentage (70%) of our lawyers’ time before proceeding with a trademark application.  We must admit that we, at our very best, manage to convince 60% of the clients to not go for marks that are directly or indirectly infringing on existing registered marks or well-known trademarks.

Some clients are persistent on their stance even when advised by us about the potential consequences of objections and oppositions when going ahead with the trademark application for a particular mark.  In certain cases, we may have to just convey our apologies and lose our clients.

Deep down in our hearts we know that it is not good for us economically to say “NO” and lose our clients.  We have had constant debates between ourselves and so far good sense prevailed. Although it is not good for our profession at large, we feel that it gives us a lot of professional satisfaction that we do the right thing by disclosing the truth to our prospective clients. It may sound that we are trying to shy away from facing heat by not getting into a trademark litigation battle, but it is not and we are just trying to prevent unnecessary litigation.

Myths about trade mark

1)  It’s okay to use popular names if we modify it a bit!

Some clients talk us into applying for a trademark essentially built around a well-known mark, and fail most of the times to convince us to go ahead with trademark application.

 For example, some think changing “Microsoft” to Microsoftx or Macrosoft may work.

While in some genuine cases, clients may have been using their trademark for quite some time, say about 15-2o years without applying for any registration.  In such cases, it is okay to go ahead with the registration even if there are registered marks already.  As long as your case is genuine, Trademark Registry or IPAB would not have any objection it. Trademark is best described as “a distinctive characteristic or attribute used to identify a manufacturer, services, goods or product” so what most matters is the usage and exploitation of mark in trade and commerce.

2) It’s okay to register a popular name or well-known mark in a different class

It is partially okay but not entirely when you decide to apply for a mark which falls within the meaning of a well-known mark.  A well-known trade and service marks enjoys in most countries protection against signs which are considered a reproduction, imitation or translation of that mark provided that they are likely to cause confusion in the relevant sector of the public. Well-known marks are usually protected, irrespective of whether they are registered or not, in respect of goods and services which are identical with, or similar to, those for which they have gained their reputation. In many countries, they are also, under certain conditions protected for dissimilar goods and services. It should be noted that, while there is no commonly agreed detailed definition of what constitutes a “well-known mark,” countries may take advantage of the WIPO Joint Recommendations on the Protection of Well-Known Marks[1].

A well-known trademark, such as Reliance, Tata, Gillette, Colgate, Pepsodent, is protected by default because of its very popularity even if it is not registered legally.  So, it is not a good idea to infringe or try to register well-known brands even under different classes.

How a well known trademark is protected – even if it is not registered?

Let us examine this question with the help of two decided cases here.  One pertains to consumer electronics giant “Sony Corporation” and the other, Nestle’s trademark “Maggi.”  One may argue that we have feminine names “Soni” in Northern India and other parts of the world, but did that argument really proved effective?  No, sadly, a textile company claimed that it has been using the mark “ABT Sony” since 1998 and applied for registration under Class 25 and placed the same arguments before the IPAB board.  However, the IPAB board rejected the contention and went a bit further to censure the “register of trademarks” for allowing registration of the mark.

The IPAB in OA/49/2007/TM/KOL, in its order

“The essential features of the respondent mark abt SONY include the whole of appellants mark “SONY” with ‘abt’ used as a prefix in conjunction with SONY which is merely an alibi. The public and consumer will ask for SONY garments and not ‘abt’ possibly thinking it originates from SONY trade mark owners. Incautious, ignorant and upcountry consumers are likely to be deceived. The main idea of both the marks hinges on SONY. It is clear the respondent are trying to take unfair advantage of the famous mark SONY to the detriment of the reputation of the appellant’s and is against honest practice in industrial or commercial matters. The inclusion of the word SONY in the respondent’s mark very prominently is completely and out rightly dishonest as the impugned mark includes the whole of the appellant’s mark and it stands out very prominently. These are unacceptable commercial behaviors and unfair to the point of bad faith.

XVII. In the result, OA/49/2007/TM/KOL is allowed and the application No.1255896 in class 25 is refused registration [2].

In “Maggi” Case, The Intellectual Property Appellate Board (IPAB) has set aside an order by the senior examiner of the Patent Office, allowing the application of a Mumbai-based company to register the ‘Maggi’ trademark for its household and kitchen appliances.

Swaraj had filed applications for the Maggi trademark for various household articles and kitchen appliances, beside electronic equipment. Trademark applications were filed for electric fans, heater, geysers, bulbs, electric components, gas lighters and heating utensils, too.  The senior examiner at the patent office said the goods in question were quite distinct from those of Nestle and the latter had also not proved that the trademark was well known.

In the IPAB, Nestle argued the word Maggi was derived from the surname of Julius Maggi, founder of the business of Nestle Group, carried on from 1886 up to 1947. And, that Nestle had sold products under the trademark in India since 1974. It had registered it in 1970 in India for various food products. Annual sales turnover on this head was Rs 673 crore in the year 2007, it added.

How to create your own trademark?

We may not be able to help you in this, as this is matter of creativity and is up to you.  If you want to exercise monopoly, it is advisable that your trademark possess the qualities described below:

• Create or coin your own mark – our statistics shows only 15% of our clients’ marks are coined.
• Ensure your trade mark is not descriptive of your trade, services, goods, or products.  E.g., Tasty foods cannot be a good trademark for a food services provider.
• Do not use well-known names or popular marks, even if your trade is entirely different.  E.g., Appu Brand.
  
• Do not use part of registered marks.
• Do not use pseudomarks, such as “Mikrosopht” which is phonetically similar to “Microsoft”.

While the above mentioned will certainly help you, there is no hard and fast rule or shortcut.  The simple rule is to make sure your mark has a blend of creativity and innovation and does not resemble other’s marks.

References

1. http://www.wipo.int/sme/en/ip_business/marks/well_known_marks.htm
2. http://www.ipab.tn.nic.in/227-2013.htm/
3. Microsoft, Nestle, Maggi, Sony and other trademarks referenced here are the property of respective trademark owners.