Trademarks in IT

A trademark is any word (Intel, Microsoft), name (Giorgio Armani), symbol (a

logo), device (the Windows frames), slogan (This way in! Where do you want to go

today?), package design (Coca-Cola bottle) or a combination of these. It’s a

mark that identifies and distinguishes a specific product from others in the

market place (trade). Even a sound (the Microsoft chimes) or a colour

combination can be a trademark under some circumstances. 

Technically, a trademark is a visual symbol in the form of a word, device or

a label applied to goods to indicate to a purchaser that that good is

manufactured or dealt in by a particular person, as distinguished from similar

goods manufactured or dealt in by other persons. As the owner of a trademark,

you have the exclusive right to use it to identify your goods or services, or to

authorise another, by means of a license, to use it in return for payment.

Proper use of a trademark is essential for its continued protection. Companies

must properly use their trademarks to aid the consumers who depend upon them and

to prevent a trademark from becoming generic. 

In a larger sense, trademarks promote initiative and enterprise worldwide by

rewarding the owners of trademarks with recognition and financial profit.

Trademark protection also hinders the efforts of unfair competitors, such as

counterfeiters, to use similar distinctive signs to market inferior or different

products or services. The system enables people with skill and enterprise to

produce and market goods and services in the fairest possible conditions,

thereby facilitating international trade.

Validity of a trademark



The period under Indian law is seven years, proposed to be increased to ten

under the new Trademarks Act. But a trademark can be renewed indefinitely beyond

the time limit on payment of additional fees. Trademark protection is enforced

by the courts, which in most systems have the authority to block trademark

infringement.

Trade name vs trademark



A trade name is used to identify a company or a business and serves as the

name of the company or a business. In contrast, a trademark or service mark,

identifies the source of the products or services that the company or business

provides. However, a trade name can also function as a trademark or service mark

depending upon the context in which it is used. If a trade name is used as more

than just the company name and informs consumers where a product or service is

coming from, then it is being used as a trademark.

What trademarks can be registered?



The possibilities are almost limitless. Trademarks may be one or a

combination of words, letters, and numerals. They may consist of drawings,

symbols, three-dimensional signs (such as the shape and packaging of goods),

audible signs (such as music or vocal sounds), fragrances, or colours used as

distinguishing features.

In addition to trademarks identifying the commercial source of goods or

services, several other categories of marks exist. Collective marks are owned by

an association whose members use them to identify themselves with a level of

quality and other requirements set by the association. Examples of such

associations would be those representing accountants, engineers, or architects.

Certification marks are given for compliance with defined standards, but are not

confined to any membership. They may be granted to anyone who can certify that

the products involved meet certain established standards. The internationally

accepted ISO 9000 quality standards are an example of such widely-recognised

certifications.

How to register a trademark



First, an application for the registration of a trademark must be filed with

the Trademarks Registry. The application must contain a clear reproduction of

the sign filed for registration, including any colours, forms, or

three-dimensional features. The application must also contain a list of goods or

services to which the sign would apply. The sign must fulfil certain conditions

in order to be protected as a trademark or other type of mark. It must be

distinctive, so that consumers can distinguish it as identifying a particular

product, as well as from other trademarks identifying other products. It must

neither mislead nor deceive customers or violate public order or morality.

Finally, the rights applied for cannot be the same as, or similar to, rights

already granted to another trademark owner. This may be determined through

search and examination by the Trademarks registry, or by the opposition of third

parties who claim similar or identical rights.

How extensive is trademark protection?



Almost all countries in the world register and protect trademarks. Each

national or regional office maintains a Register of Trademarks, which contains

full application information on all registrations and renewals, facilitating

examination, search and potential opposition by third parties. The effects of

such a registration are, however, limited to the country (or, in the case of a

regional registration, countries) concerned.

Rodney D Ryder  is a lawyer with Anand and

Anand.