Prateek Charan
Trademark: General Introduction
The Trademarks Act, 1999, defines a trademark as “a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colors.”[1] In essence, it is basically a sign that is used to distinguish the goods or services offered by one undertaking from those offered by another.[2]
There are two main characters for a trademark, it must be distinctive, and it should not be deceptive.
Trademark has existed in the ancient world. As long as 3000 years ago, Indian craftsmen used to engrave their signatures on their artistic creations before sending them to Iran.[3] They have been used to simplify the identification by consumers of goods or services, as well as their quality and value.
Functions
The CJEU,[4] in its landmark judgment in Hag II[5] noted that the essential function of trademarks is to guarantee the identity of the marked products to the consumers. For a trademark to be able to perform its original identification function, the proprietors of a registered mark[6] should be granted the right to exclude the use of the same trademark on goods and services that are not produced by them.[7] By granting this exclusive right, trademark proprietors benefit, in the short run from the coherent undisrupted connection which is developed between them and their products, and in the long run from the marketing boost arising from using the same trademark as means of identification.[8]
Public Interest
The inherent link between Public Interest and Trademark Protection comes from the right of the trademark proprietor to sue an infringer (for two purposes, namely); first, for protecting his own pecuniary interests by suppressing a form of unfair competition; second, for protecting the public from being deceived or misled.[9] For, a trademark does not necessarily guarantee to the consumer the very highest quality, but it does guarantee uniformity of quality at a consistent level.
In Oberlin v. Marling American Corporation,[10] the infringement of a trademark was seen from its impact on the public, and it was said that an infringing mark is one whose use is likely to cause confusion or mistake to, or may deceive, the public.[11]
Years before Oberlin, it was explained by the US Supreme Court that a trademark proprietor is entitled to legal protection, not only as a matter of justice to him, but as to prevent imposition upon the public as well,[12] and also that the protection of the public is the fundamental consideration in the law of unfair competition.[13]
Protection of Brand
A brand is successful when it is recognizable, desirable, credible, properly communicated.[14]
Since the time of its origin, a trademark served only purpose of indicating the commercial origin of services or goods at any given place, and the public interest always played only a secondary role.[15] It was noted in Mary Kay Inc. v. Weber[16], that most companies follow the brand image and get their trademarks registered so they can reap the benefits of goodwill of their business, and they are not much concerned about public interest,[17] since in my view, it has always been ancillary purpose of trademark protection. For, trademark protection is practiced by companies so that they may shut down pirates and unfair competition that threaten to lower the goodwill of the company.
Analysis
Trademark law per se does not serve the purpose of indicating the source of the product to the consumers, neither has it aimed at protecting the interests of the consumers. They are just the ancillary or secondary considerations, the primary one is to protect the business and its products from the possible infringement by other entities whatsoever, thus, basically it focuses on the business perspective, especially for new companies that have yet not registered their trade mark, by ensuring that the non-registration is not taken illegal benefit of by others. The question of public interest, in ensuring that they receive the product that they actually only creeps in after the trademark has been registered, the purpose of getting it a thing trademarked is prima facie for the protection of their brand.
Conclusion
Having considered the different notions governing the importance of trademarks, it would be wise to conclude that the primary focus of trademark protection is, and ought to be, the protection of the brand value of any corporation, and entertainment of public interest is only resultant consideration.
[1] Section 2 (1) (zb), Trademarks Act, 1999.
[2] §45, Trademarks Act of 1946, 15 U.S.C. §1127 (1976), available at https://www.uspto.gov/sites/default/files/trademarks/law/Trademark_Statutes.pdf.
[3] WIPO Intellectual Property Handbook: Policy, Law and Use, available at http://www.wipo.int/about-ip/en/iprm/.
[4] Court of Justice of the European Union, https://curia.europa.eu/jcms/jcms/j_6/en/.
[5] SA CNL-SUCAL NV v. HAG GF AG, 02/11/2008, available at https://www.ippt.eu/files/1990/IPPT19901017_ECJ_Hag_II.pdf.
[6] Section 2 (1) (v), The Trademarks Act, 1999.
[7] A. Griffiths, An Economic Perspective on Trademark Law, Elgar Publishing Limited, 2011.
[8] Dima Basma, The Nature, Scope, and Limits of Modern Trademark Protection: a Luxury Fashion Industry Perspective, Ph.D. Thesis submitted to University of Manchester. See also, A. Griffiths, A Quality in the European Trade Mark Law, North Western University Law Review 11(7), at 623- 631 (2013).
[9] Sidney A. Diamond, The Public Interest and the Trademark System, 62 J. Pat. Off. Soc’y 528 (1980).
[10] 596 F.2d 1322 (7th Cir. 1979).
[11] Id.
[12] Manhatten Medicine Co. v. Wood, 108 U.S. 218, 223 (1882).
[13] Norwich Pharmacal Co. v. Sterling Drug, Inc. 271 F.2d 569 (2d Cir. 1959).
[14] Helen Lom, Branding: How to use IP to create value for your business?, WIPO, available at https://www.wipo.int/sme/en/documents/branding_fulltext.html.
[15] Mark P. McKenna, The Normative Foundations of Trademark Law, Notre Dame Law Review Vol. 82 Issue 5 (2007).
[16] Civil Action No. 3:08-CV-0776-G (2009).
[17] Id.
Lawcutor 