Preventing Your Brand From Getting Hijacked
Brand names are known as ‘Trade Marks’ and the names of enterprises are known as ‘Trade Names’.
In order to prevent one’s logo, brand name/mark etc. from being misused by another, it is essential to be aware of the existence of such misuse in different areas and jurisdictions. An owner should not sleep over his rights by letting another misuse his mark without his knowledge as the same would amount to acquiescence of such misuse and losing rights with respect to his mark. One of the ways to monitor the use of one’s mark is by conducting a regular search in the relevant trademark database(s) to ascertain whether any other person proposing to use a mark similar to or identical with one’s own mark has filed an application for registration with regard to the same and raising opposition and objection to such application and proposed use
In case one becomes aware of misuse or infringement by another person, legal proceedings may be initiated in the form of a suit for infringement or passing off. The remedies available in such proceedings would be grant of an injunction(stoppage of such misuse) and/or award of damages and/or delivery-up of the infringing labels and marks for destruction or erasure.
A domain name is a website address on the Internet which gives you an online identity. Owners should obtain a domain name with the name of their respective brand so that unscrupulous users may not have a website with the same name as their brand. This assumes importance as when a person conducts an online search with the name of a particular brand, logo etc., then someone else’s webpage should not show up as it might lead to confusion.
If a person proposes to carry on business/trade in foreign jurisdictions or countries, then an application for protection of his mark in the proposed/designated countries may be made under the Madrid System for the International Registration of Marks (Madrid System). The Madrid System is the primary international system for facilitating the registration of trademarks in multiple jurisdictions around the world. If registration is granted under the Madrid System, it is easier to monitor the use of one’s mark in the International Register, which is a single centralized system maintained by WIPO.
The most important way to safeguard your trademark, however, is to apply for and obtain registration in respect of it. Registration of a trademark confers an array of rights and privileges to the ‘owner’ in comparison with unregistered marks. Some of them being:
The owner of a trademark or trade name has the right to use the same in relation to the goods or services for which it has been registered, to the exclusion of all others. The registered owner of a trademark ensures legal exclusivity to such person for the use of a name, brand, logo etc. This prevents any other person, trader, enterprise etc. from using the same in relation to their own business, goods and services and protects the mark of the registered owner by conferring exclusivity.
Before a person can use a name, logo, mark etc., it is imperative upon him to conduct a search in the trademark database to ascertain whether registration in respect of the same has already been granted. If registration has already been granted, then the trademark examiners are likely to refuse registration to conflicting marks. If, however, a similar or conflicting mark is accepted for registration, having a prior registered mark gives a person a strong right to oppose the registration before it’s officially entered on the register. It is advisable for owners to carry out a regular search in the trademark database in order to ascertain whether any application for registration has been filed for a name or mark which is similar to theirs and to file objection or opposition at the relevant time and stage in order to safeguard their rights as also to assist the examiner by preventing him from granting registration in respect of similar or conflicting marks or names.
Before an application for registration of a mark can be made under the Madrid system, it is necessary that the trademark must have been granted registration or registration has been applied for in the country of origin of the mark. So, if a person proposes to carry on trade or business in any foreign jurisdiction, then to apply for protection of his trademark, trade name, logo etc., in that country, he would first have to be granted registration in his own country or have to make an application for registration.
Under the Indian Trademarks Act, 1999 (“the new Act” hereinafter), Section 27 lays down that a suit for infringement will not lie in respect of an unregistered trademark. So, registration of a trademark is a precondition to initiating an action for infringement and for an unregistered trademark, only the common law remedy of ‘passing off’ lies.
Registration of a mark provides a greater degree of safety and protection in cases of assignment, licensing, authorized usage etc. as opposed to an unregistered mark.
Registration of a mark enables greater cooperation by third parties. For example, Google will act to prevent traders from bidding on ‘keywords’ that contain a registered trademark. Similarly, websites such as Amazon or eBay would take action to take down listings by other traders which infringe a registered trademark.