Trademark is anything that creates a distinction between one’s product or company with others. Necessity is the mother of invention, but without ideas, there won’t be any inventions. Humans’ intellect is the reason behind their ideas and those ideas are the sources behind their inventions. Hence, those intellect are property owned by each and every Human being, and those properties should be protected, as to prevent the stealing of one’s ideas and ceasing the cycle of inventions. That’s the reason behind the concept of having Intellectual Property Rights. In this article, we will see a little bit about Indian Trademark law, which is a part of Intellectual property, and also discuss whether a Trademark can be jointly owned or not?
What is a Trademark?
If I ask you to differentiate a Coca-Cola with a Pepsi, how will you distinguish it? Some will say that Coke is Red and Pepsi is Blue, some will say Coke has a different logo and Pepsi has a different logo, some will say Coke has a different taste than Pepsi. That is basically what a Trademark is. In layman terms, a trademark is anything that creates a distinction between one’s product or company with others. In this case, Pepsi and Coke have various Trademark values.
As per Indian Law1 any 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 the shape of goods, their packaging, and combination of colours. “Mark” under this statute means any device, brand, heading, label, ticket, name, signature, words, letter, numerals, the shape of goods, packaging or combination of colours or any combination thereof2.
Trademarks are very useful for a business, it gives a business its identity and the features that differentiate it from its competitor. Consumers can be alerted regarding the quality of the product with the help of the Trademark. For example; we can all identify the “S” logo of Maruti Suzuki, and by looking at that we can identify that it’s a car made by Maruti, and we can also prejudice the quality of the car just by looking at the logo. This is the reason why Trademarks are so useful and hence, should be protected.
How to Protect Trademarks?
A Trademark can be Registered, which can help in protecting the Trademark. But, we should also understand that, even if someone has not registered his trademark, it does not mean that he would not get any legal remedies. Both registered and unregistered Trademark will get legal remedies, the reason why someone should register his Trademark is that, after the registration of the Trademark, it provides a prima facie evidence of ownership of the Trademark. That means that he does not have to show any evidence of owning that trademark whereas, a non-registered Trademark has to establish the prior use and passing off of that Trademark.
To register a Trademark some condition has to be fulfilled, before giving registration the registrar has to examine certain factors such as;
1. There should not be any absolute grounds for refusal of Registration:-
Section 9 of the Indian Trademark Act, specifically provides grounds for rejections of registration. Such as:
- The goods and services must have a distinctive character than others.
- Those goods and services having marks or indications, which serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin, or the time of production of a good.
- Those goods and services having marks or indications, which have become customary in the practices of trade, or current language.
- If any marks or indication is made to deceive the public or which causes confusion.
- Any marks or indication that can hurt religious sentiments.
- Any marks or indication that contains obscene matters.
- Any marks or indication, whose use is prohibited under the Emblems and Names Act, 1950.
2. There should be a Colour Limitation:
There are numerous colours and their combination. Hence, to create a distinctness, there is a limitation in registering colour as a trademark. Because, if a trademark is registered without limitation of colour, it will be deemed to be registered for all colors.
3. There should not be any relative ground for refusal:
As we have already seen a Registrar can refuse the registration on absolute grounds, but sometimes the Registrar has to also see the contemporary situation to decide the registration of a trademark, hence Section 9 of the Indian Trademark Act, 1999 provides power to Registrar to refuse registration on relative grounds like;
- If there is any likelihood of confusion, because of earlier trademarks by the characteristics of its identity.
- If the earlier trademark is popular, and the new trademark will take unfair advantage of the popularity.
4. Chemical elements or International non-proprietary names:
5. Name and Representation of a living animal:
There won’t be any registration of any trademark that has a connection with any living person or a person whose death took place within 20 years. Also one cannot register a trademark having some else’s name without consent in writing.
Can Trademark be jointly owned?
Yes, a Trademark can be jointly owned. A trademark is owned by a sole proprietor and that is why the rights and liability are also bared by that proprietor, in jointly owned trademarks, there are multiple proprietors and because of that the rights and liability are also shared amongst all the proprietors.
Section 24 of the Indian Trademark act states that
“(1) Save as provided in sub-section (2), nothing in this Act shall authorize the registration of two or more persons who use a trade mark independently, or propose so as to use it, as joint proprietors thereof.
(2) Where the relations between two or more persons interested in a trademark are such that no one of them is entitled as between himself and the other or others of them to use it except–
(a) on behalf of both or all of them; or
(b) in relation to an article or service with which both or all of them are connected in the course of trade, those persons may be registered as joint proprietors of the trademark, and this Act shall have effect in relation to any rights to the use of the trademark vested in those persons as if those rights had been vested in a single person.”
The section itself does not authorize the joint-registration of Trademark, but rather it provides certain conditions in which there can be a possibility of joint-registration. In the case of jointly-owned trademark, there should be;
- All the rights and duties of the trademark will be shared by the applicants.
- The trademarks can not be independently used by one of the applicants, but rather jointly used by all the applicants.
- The trademark can only be used in relation to the business, which the applicants have mentioned during registration.
It should also be noted that joint trademark will sustain as long as all the joint-proprietors are engaged in a joint venture when the ventures cease the joint trademark will also cease. In Power Control Appliances v. Sumeet Machines Pvt. Ltd3, the defendant proclaimed himself the rival of the Complainant, and because of that jointly owned trademark could not be used in a rivalry with each other.
The rivalry or joint-venture can be tested when all the goods that are going be marked with the Trademark, should be passed through both the parties, if both are not aggrieved, they pass the test.
Some Examples of Jointly owned Trademarks.
- In 2001, there was a new range of mobile phones that came into the market known as “Sony Ericsson”, this brand was jointly ventured by Sony and Ericson. Both have different trademarks but to follow up with this venture they created a new logo for their Sony Ericsson company, which ultimately became their jointly owned trademark.
- In 1999, VOLVO sold its Car manufacturing automotive division to FORD MOTOR COMPANY, yet still had rights over all other automotive divisions such as its truck business. This caused a sharing of rights of trademark and hence VOLVO gave control of its car manufacturing automotive division to FORD4.
- Indian Trademarks Act, 1999. s. 2(zb)
- Indian Trademarks Act, 1999. s. 2(m)
- Power Control Appliances v. Sumeet Machines Pvt. Ltd. AIR 1993 Mad 120.
- Martand Nemana, “Joint ownership of Trademark”, MONDAQ, (9 June 2017) https://www.mondaq.com/india/trademark/600602/joint-ownership-of-trademarks
Student, Manipal University, Jaipur
Aniket has a keen interest over criminology and criminal trials. He’s exploring his interests in the field of law and wants to become a great criminal litigator. For any Clarifications, feedback, and suggestion, you can reach him at firstname.lastname@example.org