I want 100% Protection in one application! – Are you trying to make a fortune out of me?
Every trademark lawyer in his career would have faced these statements and questions a numerous times from his clients, “I do not want to spend too much on trademark registration” “Can’t I just protect my mark in one application?”, “Why do you want me to file separate applications?” A client’s state of mind is quite obvious here and perfectly understandable. When approached by our clients, we normally explain them all the legal options available to ensure complete protection. For example, for a food product (FMCG), we normally suggest that separate applications be filed for trade dress, word mark, etc. to get complete protection. Although we try our best to not sound as “sales agents”, sometimes we cannot help ourselves from being seen so by some of our clients. Having said that, it is quite normal for a layman who has limited exposure to intellectual property rights and laws to think so – thanks to rumours, gossips, free advises, hearsays and freely available misleading information and to an extent a proportion of blame is to be placed on the legal professionals.
Is trademark a legal or quasi-legal or clerical process?
The industry has evolved to the point that now we encounter clients who tend to bargain on the legal fees, process and always want an “easy route”, under the misconception that all it requires to get a trademark is a “human clerical mind” to fill out the most appropriate prescribed application.
We beg to differ here substantially because a trademark, in our opinion, is a legal process by which you will not only earn certain rights, but also rights that restrain others from doing something in totality or to do something the way you want it to be done. So, it is a negative right and in order to get a negative right against others, it is important that your right is complete without any leaks or flaws, through which one can take advantage.
A mistake can cost you a lot, if not now, perhaps later
Not claiming or overclaiming something in your application can land you or your associates in trouble later. We want to emphasize the importance of intellectual property rights which are negative rights, granted to you against the world. You would be best served when such right is tightly sealed not allowing any room for any leaks.
The cost of registration outweighs the benefits
One must wonder the rationale behind investing in intellectual property rights protection and enforcement, and this is something more common amongst the new startups, SMEs, and conservative proprietors. You may not know when you would get hurt.
Intellectual property can be monetized and commercialized in several ways, such as licensing trademarks, patents, copyrights. This is best seen in businesses that involve Franchise models and joint ventures and merges and acquisitions.
We can hear you saying, “Please cut the crap!” Okay, let us discuss a case here – ITC vs. Cadbury
One should have normally seen the news about the trademark infringement/passing off case between ITC and Cadbury. The infringement, precisely a passing-off, suit started way back in 2005 by Cadbury India Pvt. Ltd. against ITC for infringing its mark “CADBURY CHOCO LAIRS” as well as “CADBURY CHOCO ECLAIRS”, but in essence the original infringement suit was later converted into a passing-off suit and the subject matter became “trade dress”, i.e., wrapper in purple and gold combination.
IP Leaks in this case: Cadbury got registrations only for word “CADBURY CHOCO ECLAIRS” but NOT for the following
1) Wrappers in Purple and Gold Combination
2) for the word “ECLAIRS”
3) unable to prove substantially the date of first usage of trade dress, i.e., wrappers in the market
Lower Court: In a City Civil Court in Allahabad, Cadbury managed to get an exparte interim order against ITC.
Allahabad High Court: Cadbury Ltd. And 2 vs Itc Ltd. And 1 on 20 July, 2005 ITC appealed against the order in Hon’able Allahabad High court quashed the order because of the IP Leaks mentioned above.
What happened eventually in the case?
More recently, ITC won the case against Cadbury in respect of the mark “ECLAIRS” mainly because of ITC’s continued and extensive use of the mark in commerce. The Intellectual Property Appellate Board (IPAB) comprising its vice-chairman, S. Usha and its technical member, V. Ravi passed the order on applications filed by ITC Limited, Kolkata, which sought to remove the Cadbury’s trade marks on several grounds, the strongest one being the discontinuation of extensive and uninterrupted use of trademark “Eclairs” in commerce.
“They have not used the marks even after obtaining registrations several years ago and the marks shall be cancelled for non –use”, said the Board.
Moral of the story?
1) Do not take the cheapest route
2) Trademark is not similar to applying for a driving license or PAN Card. It is a legal right to be obtained through a legal process.
3) An incomplete protection is no protection.
4) Use the mark continuously even after it is registered to you.