OVERVIEW
Trademark registration is a legal process by which a business or an individual can protect its unique name, logo, symbol, design, or any other distinctive feature that represents their brand, product or service. A registered trademark gives the owner the exclusive right to use the mark in connection with the goods or services for which it is registered, and to prevent others from using a similar mark that may confuse consumers.
After post-trademark registration, it is important for the trademark owner to comply with certain legal requirements to maintain the validity and protection of their registered trademark.
Obtaining a trademark registration is just the beginning of the journey. After securing a trademark registration, a brand must follow specific post-registration compliances to maintain the validity and protection of its trademark. These obligations are necessary to ensure that the trademark remains valid and enforceable. In this article, we will discuss various post-trademark registration compliances that a brand must undertake, including trademark renewal, monitoring, enforcement, and record-keeping. These compliances are crucial for a brand to maintain the validity and protection of its trademark and protect the brand's reputation and goodwill in the marketplace.
THE ESSENTIAL POST-TRADEMARK REGISTRATION COMPLIANCES
i. Renewal of Trademark:
Renewal of trademark registration is an essential compliance requirement as it ensures that the trademark remains valid and protected. The registration of a trademark is valid for a period of ten years from the date of filing the application. After ten years, the trademark owner must renew the trademark registration by filing a renewal application along with the prescribed fee. This process must be repeated every ten years to keep the trademark registration active.
Trademark renewal is a critical post-registration compliance, and its importance can be seen in the legal cases involving Coca-Cola and Cadbury.
a. In the case of Coca-Cola 1977, the brand allowed its trademark registration to expire, and a company named The NutraSweet Company applied for a trademark for a soft drink named "Diet Coke." Coca-Cola opposed the application, but the court ruled against it because Coca-Cola had failed to renew its trademark registration. As a result, Coca-Cola had to settle with The NutraSweet Company and later reintroduced its Diet Coke under a different trademark.
b. Similarly, in the case of Cadbury, the brand failed to renew the trademark registration for its iconic purple colour used on its Dairy Milk chocolate wrappers. A competitor filed an application to register a similar purple colour, which Cadbury opposed. However, since Cadbury had failed to renew its trademark registration for the purple colour, the court ruled against it.
ii. Monitoring for infringement:
Monitoring for potential infringement is a critical post-trademark registration compliance for brand owners. This involves actively watching for any third-party use of trademarks that are identical or similar to your registered trademark in connection with similar or related goods or services.
If a third party uses a trademark that is identical or confusingly similar to your registered trademark without your permission, it may constitute trademark infringement. The use of such a similar trademark can confuse consumers and dilute your brand identity. Therefore, as a trademark owner, it is essential to take necessary action to protect your trademark rights and maintain your brand reputation.
Here are some ways brand owners can monitor for trademark infringement:
1. Online Monitoring:
With the rise of the internet and e-commerce, monitoring for trademark infringement online has become more important than ever. A brand owner can use various online tools to monitor for trademark infringement, such as Google Alerts, social media monitoring, and domain name monitoring services. These tools help to identify potential infringing uses of your trademark online, allowing you to take action before the infringement causes significant damage to your brand.
2. Trade Publications and Journals:
Monitoring trade publications and journals in your industry can help identify any new players or businesses that may be infringing your trademark rights. Any use of a similar trademark in connection with similar or related goods or services should be investigated and dealt with immediately.
3. Marketplace Platforms:
E-commerce platforms like Amazon and eBay provide tools to monitor for infringing uses of trademarks on their platform. Brand owners can use these tools to report infringing listings and take necessary action against the infringers.
4. Hiring a Trademark Attorney:
Trademark attorneys can assist brand owners in monitoring for trademark infringement and taking necessary action to protect their trademark rights. Trademark attorneys can conduct regular searches for trademark infringement and provide legal guidance on how to take action against infringers.
One notable case involving trademark infringement monitoring is the case of Louis Vuitton Malletier S.A. v. Akanoc Solutions, Inc. In this case, Louis Vuitton sued Akanoc Solutions, a web-hosting company, for contributory trademark infringement. Akanoc Solutions provided web hosting services to websites that sold counterfeit Louis Vuitton products. The court found that Akanoc Solutions had knowledge of the infringing activities and had the ability to control them, making them liable for contributory trademark infringement.
iii. Use of trademark
1. It refers to the actual commercial use of a trademark in connection with goods or services for which it is registered. Simply obtaining a trademark registration is not enough to protect your trademark rights; you must also use your trademark in commerce. This is because the purpose of trademark registration is to identify the source of goods or services and distinguish them from the goods or services of others.
2. Under Indian law, a trademark registration can be cancelled if the trademark is not used in connection with the goods or services for which it is registered for a continuous period of five years. This means that you must use your trademark consistently and prominently in commerce to maintain your trademark rights and prevent others from using it.
3. Examples of using a trademark in commerce include placing the trademark on the packaging, labels, or advertising materials of the goods or services. It is important to use the trademark consistently and prominently to establish brand identity and prevent others from using it.
4. In the case of Parle Products Private Limited vs. J.P. and Company, the court held that non-use of a trademark for a continuous period of five years can be a ground for cancellation of the trademark registration. The defendant had argued that they had started using the trademark after a gap of several years, but the court held that the onus was on the defendant to prove use and that the defendant had failed to do so.
iv. Assignment of a trademark
It refers to the transfer of ownership of a trademark from one person or entity to another. Licensing of a trademark, on the other hand, refers to the grant of permission by the owner of a trademark to a third party to use the trademark in connection with the goods or services for which it is registered. In both cases, it is important to record the assignment or licensing in the trademark register to establish ownership and prevent disputes.
Recording the assignment or licensing of a trademark in the trademark register is important for several reasons:
1. Establishing ownership: Recording the assignment or licensing helps establish the legal ownership of the trademark. This is especially important in case of any disputes or legal actions related to the trademark.
2. Avoiding confusion: Recording the assignment or licensing of a trademark in the trademark register helps prevent confusion and disputes over ownership. This is because the register provides a public record of the ownership of the trademark.
3. Protecting the brand: Recording the assignment or licensing of a trademark in the trademark register helps protect the brand by ensuring that the trademark is being used properly and consistently. This helps maintain the brand's reputation and value.
a. In case involving the assignment of a trademark is the case of Daimler AG v. Registrar of Trademarks. In this case, Daimler AG had assigned the trademark "MERCEDES" to a subsidiary company, but had not recorded the assignment in the trademark register. The court held that the assignment was not valid until it was recorded in the trademark register, and that the subsidiary company was not entitled to register the trademark in its own name.
b. In another notable case involving the licensing of a trademark is the case of Bata India Ltd. v. Pyramid Traders and Ors. In this case, Bata India had licensed the trademark "HUSH PUPPIES" to a third party, but the third party had exceeded the scope of the license by using the trademark in connection with unrelated goods. The court held that the third party had infringed Bata India's trademark rights by using the trademark in a manner that exceeded the scope of the license.
V. An affidavit of use
It is a document filed by the owner of a trademark to confirm the use of the trademark in connection with the goods or services for which it is registered. The affidavit of use is typically filed with the trademark office and serves as proof of the trademark owner's use of the trademark.
Filing affidavits of use is important for several reasons:
1. Maintaining trademark registration: Filing affidavits of use is a requirement to maintain trademark registration. Failure to file an affidavit of use can result in the cancellation of the trademark registration.
2. Ensuring proper use of the trademark: Filing affidavits of use helps ensure that the trademark is being used properly and in connection with the goods or services for which it is registered. This helps prevent misuse of the trademark and maintains the value of the brand.
3. Establishing ownership: Filing affidavits of use helps establish the ownership of the trademark and prevents disputes over ownership.
In case involving the filing of affidavits of use is the case of Procter & Gamble Co. v. Vinita Ayer and Ors. In this case, the trademark owner had filed an affidavit of use to maintain the trademark registration. The court held that the affidavit of use was sufficient evidence of the trademark owner's use of the trademark and allowed the trademark registration to be maintained. Another notable case involving the filing of affidavits of use is the case of Alliance Entertainment Corporation v. Vishal Kapoor and Ors. In this case, the trademark owner had failed to file an affidavit of use for several years, resulting in the cancellation of the trademark registration. The court held that the failure to file an affidavit of use was sufficient grounds for the cancellation of the trademark registration.
VI. A trademark audit
A trademark audit is a review of the trademark portfolio of a brand owner to ensure that the trademarks are being used in compliance with applicable laws and regulations. A trademark audit can help identify potential issues with the trademark portfolio and provide guidance on how to address these issues.
Trademark audits are important for several reasons:
1. Ensuring compliance: A trademark audit can help ensure that the brand owner is using the trademark in compliance with applicable laws and regulations.
2. Identifying potential issues: A trademark audit can help identify potential issues with the trademark portfolio, such as trademarks that are not being used, trademarks that are being used improperly, or trademarks that may be infringing on the rights of others.
3. Providing guidance: A trademark audit can provide guidance on how to address potential issues with the trademark portfolio.
In case involving trademark audits is the case of Titan Industries Limited v. M/s. Ramkumar Jewellers. In this case, the plaintiff had conducted a trademark audit and found that the defendant was using a deceptively similar trademark. The court held that the defendant's use of the trademark was likely to cause confusion among consumers and constituted trademark infringement.Another notable case involving trademark audits is the case of Rolex Watch Company Limited v. Alex Jewelry Pvt. Ltd. In this case, the plaintiff had conducted a trademark audit and found that the defendant was using a trademark that was similar to the plaintiff's trademark. The court held that the defendant's use of the trademark was likely to cause confusion among consumers and constituted trademark infringement.
CONCLUSION
In conclusion, trademark registration is an essential process for businesses or individuals to protect their brand identity and distinguish their goods or services from others in the marketplace. However, it is equally important to undertake post-registration compliances to maintain the validity and protection of a registered trademark. Failure to comply with these requirements can result in the loss of trademark protection, which can be detrimental to a brand's reputation and goodwill. Therefore, it is crucial for brand owners to understand and fulfill their post-registration compliance obligations, including trademark renewal, monitoring for infringement, record-keeping, and using their trademark in commerce. By adhering to these compliances, brand owners can safeguard their trademark rights, maintain their brand reputation, and prevent unauthorized use of their trademark.
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