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Tag: intellectual property

  • CAN I SELL MY TRADEMARK? – TRADEMARK ASSIGNMENT

    INTRODUCTION

    A brand’s identity, reputation, and consumer trust are all represented by its trademarks, which are essential assets. Transferring ownership of these trademarks may become necessary if companies expand, merge, reorganize, or change their business plans. The legal transfer of a trademark’s rights from one party (the assignor) to another (the assignee) is called trademark assignment. Trademark assignments guarantee consistency and clarity in brand ownership and usage, whether for business benefit, reorganization, or strategic shift. The goal, forms, legal prerequisites, and steps associated with trademark assignment under Indian law are described in this paper.

    Trademark assignment is critical for maintaining legal clarity and brand integrity during transitions like mergers, acquisitions, or business restructuring. From creating assignment agreements to managing registration procedures, TMWala can help companies at every stage to guarantee a seamless and law-abiding transfer of trademark rights.

    WHAT IS A TRADEMARK ASSIGNMENT?

    The following section explains in detail what a trademark assignment entails, who it applies to, and how it functions under Indian trademark law.

    Trademark assignment is a process through which trademarks can be transferred from one person (known as the assignor) to another person (known as the assignee).  This transfer includes the transfer of rights, either all of them or only specific rights related to the trademark. In such a transfer, any kind of trademark can be transferred, either registered or unregistered.

    Trademarks are unique identities of businesses. Trademarks are closely tied to the reputation and goodwill of the brand. When a consumer sees a trademark of a known brand then they assume to receive a certain level of quality or a certain kind of service from that brand, even if they are not aware of who has made the product. Trust is the key element here as it provides trademarks with the commercial power in the market. This reputation and trust are directly tied to the effectiveness of a well-executed trademark assignment.

    PURPOSE AND FUNCTIONS OF A TRADEMARK

    A trademark serves two interlinked functions:

    • Originality: A trademark indicates that the product is original and made by a specific brand, even if the consumer does not know who manufactured the product.
    • Uniqueness: In a very competitive market, it helps in distinguishing one brand from others based on the uniqueness of its trademark.

    WHY ASSIGN A TRADEMARK?

    A trademark assignment can be useful for businesses in many cases:

    • Mergers and acquisitions: When one company takes over or merges with another company and all the assets also get transferred, including Trademarks as part of the deal.
    • Business restructuring: In this case shift or ownership takes place, including ownership of trademarks.
    • Monetization: Companies sometimes also sell or license their trademark for financial gain.
    • Change in business model: Sometimes, businesses might stop producing a product, then they sell the brand to another business and get a financial benefit from that.

    TMWala offers professional legal assistance in all of these situations, assisting companies in assessing, recording, and carrying out trademark assignments to optimize value and comply with Indian trademark law.

    Who Can Assign a Trademark?

    Only the individual or organization identified as the trademark’s registered owner may assign it, per Section 37 of the Trademarks Act, 1999. This comprises:

    • Sole Proprietor
    • Company
    • Legal heirs (in case of inheritance)
    • Legal representatives (in case of company restructuring)

    Sections 38 and 39 of the Act allow for the assignment of both registered and unregistered trademarks, with or without goodwill.

    TYPES OF TRADEMARK ASSIGNMENT

    There are a few categories of trademark assignments based on the nature and extent of the rights transferred:

    a. Complete Assignment

    When all the rights associated with the trademark are transferred from the assignor to the assignee. The assignee gets complete control over the trademark.

    Example: if a company A sells its brand “XYZ” to company B, including all its rights on the trademark. Now, Company A holds no right to the brand XYZ.

    b. Partial Assignment

    In a partial assignment, only certain rights or rights related to certain goods and services are transferred.

    Example: The assignor deals with goods that fall under class 30. He assigned rights related to chocolates to a chocolate production company, but other than that, he holds all rights on the other products which fall under class 30, for example, coffee, tea, sugar, etc.

    c. Assignment with Goodwill

    In this kind of assignment, the goodwill attached to the assignment also gets transferred to the new owner. The assignor can use the trademark for the same goods and services and get benefits from the trust already established with the consumers.

    Example: The brand “Pure”, well-known in the market for dairy products, is now being used by the new owner for dairy products along with its reputation in the market.

    d. Assignment without Goodwill (Gross Assignment)

    In this case, the trademark is transferred but with one condition that the assignee can not use it for similar goods/services. This prevents the assignee from misleading the customers.

    Example: “Pure”, used for dairy products, is sold to a restaurant chain. The chain can use the mark for restaurant services, but not for dairy products.

    LEGAL RESTRICTIONS AND CONSUMER PROTECTION

    In Indian law, some restrictions have been put on trademark assignment. This is done mainly to avoid confusion and stop consumers from being misled by the brands:

    • At a particular time, only one brand can have exclusive rights over the trademark related to the goods or services.
    • Having multiple businesses under one single trademark, dealing with a particular type of goods and services in different regions, is not allowed.

    These limitations are intended to prevent unaffiliated parties from using identical or similar trademarks in the marketplace, confusing or misleading consumers.

    STEPS FOR REGISTRATION:

    1. Apply for registration of the assignment with the Trademark Registrar.
    2. Submit supporting documents such as a deed of assignment, a power of attorney, identity proofs, and other relevant documents.
    3. The Registrar examines the request and may seek clarification or additional documents.
    4. If everything is in order, the Registrar will enter the following details in the trademark register:
      • Name and address of assignee
      • Date of assignment
      • Description of rights assigned
      • Basis of assignment
      • Date of entry in the register
    5. The application should be disposed of within 3 months from the date of filing.

    By preparing and submitting the required paperwork, communicating with the Trademark Registrar, and making sure the assignment is accurately documented to safeguard your rights and investments, TMWala provides end-to-end assistance with the registration process.

    Legal Formalities

    Execution of Assignment Agreement

    A written assignment that is signed by all parties is required. It ought to make explicit reference to:

    • Name and address of the assignor and assignee
    • Details of the trademark(s) being assigned
    • Whether the assignment includes goodwill
    • Territory and class of goods/services covered
    • Date of effect and payment terms

    Registration with the Trademark Registry

    While not mandatory for validity, registration of the assignment is highly recommended to:

    • Provide legal recognition
    • Allow the assignee to enforce trademark rights
    • Serve as public notice of ownership

    CONCLUSION

    A key legal procedure that enables companies to assign a trademark’s ownership and rights to another party is trademark assignment. In business dealings like mergers, acquisitions, restructuring, or brand monetization, it is crucial. Brand integrity and consumer interests are protected by precisely outlining the extent of rights surrendered, whether fully or partially, with or without goodwill trademark assignment. Following the law and registering the assignment guarantees openness, enforceability, and public knowledge of ownership, protecting companies and customers in the cutthroat market.

    Hiring professionals like TMWala guarantees that the procedure is not only effective and strategically sound but also complies with the law. Following the law and registering the assignment guarantees openness, enforceability, and public knowledge of ownership, protecting companies and customers in the cutthroat market.

  • Emami vs. Hindustan Unilever: Calcutta HC Rules in Favor of ‘Fair and Handsome’ in Trademark Battle

    Case 9: Emami Limited v. Hindustan Unilever Limited

    Citation: 2024 SCC OnLine Cal 3579
    Court: Calcutta High Court
    Date Decided: 9 April 2024
    Judge: Justice Ravi Krishan Kapur

    Background

    Emami Limited, a prominent Indian FMCG company, launched its men’s skincare product “Fair and Handsome” in 2005. Over the years, Emami invested significantly in building the brand’s identity, emphasizing the term “Handsome” through extensive advertising campaigns and achieving a substantial market share in the men’s fairness cream segment.

    In 2020, Hindustan Unilever Limited (HUL) rebranded its men’s skincare product from “Fair & Lovely Men” to “Glow & Handsome.” Emami perceived this rebranding as an attempt to capitalize on the goodwill of its established brand and filed a suit against HUL, alleging trademark infringement and passing off.

    PLAINTIFF’S MARK

    DEFENDANT’S MARK

    Legal Issues

    1. Whether HUL’s use of the mark “Glow & Handsome” infringes upon Emami’s registered trademark “Fair and Handsome.”
    2. Whether HUL’s adoption of the mark constitutes passing off by creating confusion among consumers and leveraging Emami’s brand reputation.
    3. Whether Emami is entitled to an interim injunction restraining HUL from using the “Glow & Handsome” mark pending the final adjudication of the suit.

    Parties’ Contentions

    Plaintiff (Emami Limited):

    • Asserted that “Fair and Handsome” is a well-established brand with significant goodwill and recognition in the market.
    • Claimed that HUL’s adoption of “Glow & Handsome” is deceptively similar and likely to cause confusion among consumers.
    • Argued that the term “Handsome” has acquired distinctiveness and a secondary meaning associated with Emami’s product due to extensive use and promotion.

    Defendant (Hindustan Unilever Limited):

    • Contended that “Handsome” is a descriptive term commonly used in the industry and lacks distinctiveness.
    • Argued that Emami had disclaimed exclusive rights over the term “Handsome” during trademark registration, limiting its ability to claim infringement.
    • Maintained that there is no likelihood of confusion between the two marks due to differences in packaging and marketing strategies.

    Decision

    The Calcutta High Court granted an interim injunction in favor of Emami, restraining HUL from using the “Glow & Handsome” mark for its men’s skincare products. The court observed that while Emami could not claim infringement due to the disclaimer over “Handsome,” it had established a prima facie case for passing off. The court noted that HUL’s adoption of a mark with a prominent and essential feature of Emami’s brand suggested an attempt to benefit from Emami’s goodwill, leading to potential consumer confusion. HUL was granted one month to comply with the order.

    Ratio Decidendi

    • Even if a term within a trademark is descriptive and disclaimed, extensive use and promotion can confer it with distinctiveness and secondary meaning, warranting protection against passing off.
    • Adoption of a mark that closely resembles a competitor’s established brand, especially with knowledge of its market presence, can constitute passing off due to the likelihood of consumer confusion and deception.
    • Interim injunctions can be granted in passing off cases where the plaintiff demonstrates a strong prima facie case, potential for irreparable harm, and a balance of convenience in its favor.

    LEGAL ANALYSIS

    • Trade Marks Act, 1999: Sections 29(1), 29(2), 29(4), 30, 34, 35
    • Code of Civil Procedure, 1908: Order XXXIX, Rules 1 and 2

    Bibliography

    Author: Suhani Sharma

  • COPYRIGHT REVIEW AMID AI CHALLENGES

    Introduction

    The rapid emergence of Artificial Intelligence (AI) technologies has transformed creative industries, raising fundamental questions about copyright law’s scope and applicability. AI systems are increasingly capable of generating literary, artistic, musical, and software works autonomously, challenging traditional notions of authorship, originality, and ownership. This article critically examines the concept and importance of copyright protection in India, outlines the process of copyright registration, and explores the emerging challenges AI poses during registration and beyond.

    What is Copyright?

    Copyright is a legal framework established to preserve authors’ rights over their original works.It grants exclusive legal rights to authors to reproduce, adapt, distribute, and publicly communicate their creations.

    Under the Indian Copyright Act, 1957 (hereinafter ‘the Act’),

    • Sections 13 and 2(o): copyright subsists in “original literary, dramatic, musical and artistic works” and “cinematograph films” and “sound recordings” and computer programmes, tables and compilations, including computer databases, respectively.
    • Section 14: The law confers rights such as reproduction, adaptation, translation, and communicating it to the public.
    • Section 2(d): The Act defines an “author” as the person who creates the workand protection attaches automatically upon the work’s creation, provided it meets originality criteria.

    Originality, central to copyright, traditionally implies a minimum degree of human creativity and intellectual effort.

    Relevance of Copyright Protection

    Copyright incentivises creativity by granting authors exclusive control over the use and exploitation of their works. It enables economic benefits through licensing and royalties, fosters cultural development, and promotes innovation in creative and technological fields. Copyright also protects moral rights, such as the ability to claim authorship and object to disparaging use of the work.

    Copyright Registration in India

    Though copyright arises automatically on creation, registration offers valuable legal benefits. Registration creates prima facie evidence of ownership and the validity of copyright, which proves crucial in infringement disputes.(Copyright Act, 1957, s 48)

    The registration procedure involves:

    • Filing an application with the Copyright Office, accompanied by the work’s copies and proof of ownership.
    • Examination by the Registrar to ensure that all statutory criteria/requirements have been met.
    • Publication of the work in the Copyright Journal invites objections.
    • Resolution of objections, if any, and final registration.

    During examination, the Registrar assesses whether the work is original and whether the applicant is the true author or rightful owner. Clear evidence of human authorship and originality is essential to successfully register the work.

    In this context, platforms like TMWALA can greatly assist creators by streamlining the copyright registration process, guiding applicants through documentation requirements, submission, and follow-up, even when works involve AI-assisted creation.

    Illustration

    Suppose an author submits a manuscript of a novel to the Copyright Office for registration. The Registrar verifies whether the manuscript is original and created by the applicant. If the applicant satisfactorily proves authorship and originality, the work is registered, securing the author’s exclusive rights.

    Artificial Intelligence and Challenges in Copyright Registration

    The advent of AI-generated works complicates established copyright principles. AI tools can produce texts, images, music, or software with minimal or no human creative input. This raises the pivotal question: ‘Who is the author?’

    Indian law, as per Section 2(d) of the Act, recognises only natural persons as authors, excluding non-human entities like AI. The absence of human creativity as a prerequisite for originality creates legal uncertainty for AI-generated works.

    TMWALA’s expert legal and technical support can help creators and businesses prepare strong copyright applications that clarify human authorship and originality, thereby improving the chances of successful registration despite the complex role of AI.

    AI in the Registration Process

    Consider a scenario where a user inputs a prompt into an AI language model, which generates a short story. If the user applies for copyright registration of this story, the Registrar faces difficult questions:

    • Originality: Can the work be considered original if it is produced by an AI algorithm rather than direct human creativity?
    • Authorship: Is the user who provided the prompt the author, or does the AI qualify as author (which the law currently rejects)?
    • Proof of Creation: How can the applicant prove authorship when the AI’s contribution is substantial or dominant?

    Such challenges may result in the refusal of registration due to unclear authorship or insufficient originality under existing law.

    Judicial Perspectives on Authorship and Originality

    Indian courts have traditionally considered the “author” as a natural person. They have traditionally upheld that copyright protects the “expression of an ideas,” not the idea itself, resulting from human skill and labour.

    In Eastern Book Company v D B Modak (2008) 6 SCC 1, the Supreme Court recognised that copyright protects the expression of ideas originating from a human creator’s skill and labour.

    Internationally, the UK Intellectual Property Office rejected copyright in AI-generated works lacking human authorship, but the US Copyright Office has entertained certain computer-assisted works if human authorship is evident. The lack of Indian judicial pronouncements on AI-generated works indicates a legal lacuna needing urgent attention.

    EMERGING LEGAL Developments: ANI v OPEN AI

    In a landmark case pending before the Delhi High Court, Asian News International (ANI) v OpenAI (2024; ongoing), ANI alleges that OpenAI’s ChatGPT was trained using ANI’s copyrighted news content without authorisation, leading to outputs that closely resemble ANI’s original reports. ANI argues this constitutes infringement under Sections 13, 14, and 51 of the Copyright Act, 1957, and does not fall under any “fair dealing” exception in Section 52.

    The case raises pivotal questions for Indian copyright law: whether AI training on copyrighted content amounts to reproduction or adaptation; whether outputs generated by AI infringe existing works; and whether AI-generated content can claim originality under Indian law. ANI relies on the EBC v D.B. Modak precedent to argue that ChatGPT lacks sufficient creativity in its outputs.

    OpenAI denies infringement, claiming that its model learns patterns, not content, and that any similarity is coincidental. It also disputes the Delhi High Court’s jurisdiction, asserting a lack of operational presence in India.

    The outcome is poised to shape India’s legal stance on AI, copyright, and content ownership in the digital age.

    Challenges and Legal Uncertainties

    1. Attribution of Authorship

    AI-generated works lack a clear ‘author’ under Indian law, which may leave such works outside copyright protection, potentially disincentivising innovation.

    2. Originality and Creativity

    Originality requires a modicum of creativity and intellectual effort by a human author. AI-generated works, which emerge from programmed algorithms and data analysis, may not meet this threshold.

    3. Infringement and Liability

    If an AI reproduces copyrighted works during its training, liability for infringement could implicate programmers, users, or AI operators, raising complex questions of secondary liability under Section 51.

    4. Economic Rights and Moral Rights

    Economic rights (Section 14) and moral rights (Section 57) may not comfortably extend to AI-generated works, especially moral rights that protect personal reputations linked to authors.

    Given the evolving nature of copyright in the AI era, TMWALA also offers monitoring and enforcement services to safeguard registered copyrights from infringement and support dispute resolution when complex AI-related issues arise.

    Proposed Legal Reforms and Solutions

    To address these issues, India could consider the following reforms:

    • Statutory Recognition of AI Authorship: Amend the Copyright Act to recognise AI-generated works and define authorship and ownership frameworks accordingly.
    • Presumption of Authorship: The programmer or the user initiating the AI-generated work could be deemed the author, as an analogy to ‘work for hire’.
    • New Rights Framework: Develop sui generis rights for AI-generated content to protect investments and innovation without full copyright.
    • Guidelines on Liability: Clarify secondary liability for AI trainers and operators concerning infringement.

    Conclusion

    Copyright law plays a crucial role in protecting human creativity and incentivising innovation. However, the rise of AI-generated works disrupts fundamental legal concepts of authorship, originality, and ownership. While India’s Copyright Act, 1957, provides a robust framework for human-created works, it lacks clear provisions to accommodate AI’s transformative impact. The ongoing judicial developments and proposed legislative reforms are vital to ensure that the copyright regime adapts effectively to the digital and AI era, balancing the interests of creators, users, and AI developers.

    Partnering with trusted platforms like TMWALA can equip creators and businesses to navigate this complex landscape, ensuring effective copyright protection and management in the face of AI challenges.

    Author: Suhani Sharma

    Bibliography

    Statutes

    • Copyright Act, 1957 (India).

    Cases

    • Eastern Book Company v D B Modak, (2008) 6 SCC 1 (India).

    Books & Articles

    • P B Hugenholtz, ‘Copyright and Artificial Intelligence: The Next Frontier?’ (2019) 31 European Intellectual Property Review 664.
    • Tanya Aplin, ‘AI and Copyright: Who Owns the Output?’ (2020) 42 European Intellectual Property Review 527.
    • R Kameshwar Rao, Intellectual Property Law (3rd edn, LexisNexis 2021).

    Websites

  • INTELLECTUAL PROPERTY RIGHTS AND THE NATURAL RIGHTS THEORY

    Intellectual Property Rights (IPR) refer to the legal protections granted to the intangible creations of the human mindsuch as inventions, literary and artistic works, designs, and symbols used in commerce. The World Intellectual Property Organization (WIPO) defines intellectual property (IP) as “creations of the mind,” which encompasses mechanisms like patents, copyrights, trademarks, and trade secrets that safeguard innovation and creativity from unauthorized use. Unlike tangible property, intellectual property is non-rivalrous and intangible, necessitating a unique legal framework for its acquisition, enforcement, and transfer.

    The emergence and development of IPR coincided with the Industrial Revolution and gained traction through the 19th century, culminating in the codification of intellectual property laws. Over time, IPR has become integral to various industries, technology, pharmaceuticals, fashion, and biotechnology, by ensuring inventors and creators have control over their work, fostering innovation and economic growth. A philosophical understanding of IPR is essential to justify the legal rights granted and explore their ethical and societal implications.

    Among the major philosophical justifications for IPR, the Labour Theory or Natural Rights Theory stands out as one of the earliest and most influential frameworks. Rooted in the works of John Locke, this theory argues that property rights naturally arise from one’s labour. This article delves into the core principles of the Labour Theory, its application to intellectual property, and its limitations in the modern context.

    LABOUR THEORY OR NATURAL RIGHTS THEORY INTELLECTUAL PROPERTY RIGHTS

    John Locke, a 17th-century English philosopher, believed that everyone has an inherent right to own the fruits of their labour. According to Locke, by mixing one’s labour with resources from nature, an individual acquires rightful ownership over the resulting product. Applying this theory to intellectual property rights, it follows that when a person employs their mental faculties to create something original, such as an invention, literary work, or artistic piece, they naturally gain ownership rights over it.

    As Locke wrote:

    “Though the earth, and all inferior creatures, be common to all men, yet every man has a property in his own person: this nobody has any right to but himself. The labour of his body, and the work of his hands, we may say, are properly his.”

    – Second Treatise of Government (1690), ch 5, para

    Therefore, intellectual products, just like crops grown or tools crafted, belong to those who invested their labour in creating them. Applying this to IPR, when an individual invents a new machine or expresses unique thoughts in the form of literature or music, they are entitled to own those expressions. For instance, John Locke would have supported granting a patent to James Watt for developing the steam engine. Watt’s labour added novelty and utility, generating economic value and technological progress. In Locke’s view, this justified exclusive ownership through a patent.

    In the modern era, platforms like TMWALA can help protect such intellectual products by enabling creators to document, verify, and timestamp their innovations on a secure digital ledger. This supports the Lockean principle of labour-based ownership by ensuring the creator’s contribution is formally recognized and protected.

    Legal Recognition and Landmark Case

    The Labour Theory of Intellectual Property Rights finds judicial backing in the case of International News Service v. Associated Press, 248 U.S. 215 (1918). Though not purely based on Locke’s theory, Justice Pitney’s opinion for the majority acknowledged a quasi-property right in news gathered through labour and investment. The Court held that while facts themselves cannot be owned, the investment of labour in gathering and distributing news conferred a right to prevent unfair commercial use by others.

    This landmark decision resonates with the Lockean view: it recognises a limited right in intellectual effort and economic value derived from one’s own work. Although contemporary IP regimes are more structured and statutory, Locke’s natural rights theory remains an influential moral foundation for these protections.

    Illustration

    Suppose a scientist invests years in isolating and refining a compound from a rare plant that shows promise in treating a disease. Even if the plant and compound exist in nature, the act of discovery, refinement, and application involves considerable intellectual and physical effort. Locke’s theory would support granting the scientist a patent because they have merged their labour with natural resources to produce something new and beneficial.

    Modern IP platforms such as TMWALA can play a crucial role in such scenarios by offering tools for documenting each stage of the innovation process from discovery to refinement enhancing the credibility of the creator’s claim and streamlining the path to legal protection.

    Contrast this with W.R. Grace’s attempt to patent the active insecticidal component of neem, ‘azadirachtin’. The company identified a naturally occurring substance and sought exclusive rights. Critics argued that the compound existed independently of Grace’s effort, and the patent would deprive communities that had traditionally used neem for similar purposes. Locke’s theory, through the Lockean Proviso, would oppose this monopolisation, as it violates the principle that “enough and as good” must be left for others.

    Criticism of the Labour Theory

    A significant limitation of Locke’s theory is its silence on the temporal limitation of Intellectual Property Rights. Whereas physical property may be held in perpetuity, intellectual property is time-bound to eventually enter the public domain. This contrast challenges the application of Locke’s perpetual ownership principle to IP.

    Locke’s Proviso further complicates matters. It requires that no one should be made worse off by another’s appropriation of resources. In Intellectual Property Rights terms, monopolies on essential knowledge, like patents on cancer-related genes (e.g., BRCA1 and BRCA2), may hinder medical advancement, thus violating this condition.

    Philosopher Robert Nozick supports this interpretation, arguing that excessive control over valuable resources can unjustly deprive others of access or opportunity. Thus, while labour justifies initial ownership, it must be balanced with societal equity and continued access for other innovators.

    Conclusion

    John Locke’s Labour Theory provides a compelling philosophical basis for recognising intellectual property rights. It aligns well with the moral intuition that individuals deserve to control and benefit from what they create through their labour. Yet, as seen through critiques and modern examples, the application of this theory must be tempered with public interest considerations and equitable access to innovation.

    While not a comprehensive justification for the entire IP regime, Locke’s theory significantly contributes to the ethical foundation of Intellectual Property Rights law. In contemporary legal systems, this perspective continues to inform debates over the scope, duration, and limitations of IP rights. Understanding it deepens our appreciation of why intellectual creations deserve protection and how such protections must evolve in a just and balanced manner.

    With solutions like TMWALA, innovators today can bridge the gap between philosophical ownership and legal protection, ensuring their labour is preserved, recognized, and safeguarded across borders.

    Author- Suhani Sharma

    Fourth year, BBA LLB, Army Law College, Pune

  • USING TRADEMARK SYMBOLS

    INTRODUCTION

    In today’s competitive business environment, building and defending your brand identity is imperative. One of the most important steps is realizing the difference between the trademark symbols TM (™) and R (®). Although the symbols look alike, they are used for different purposes and have varying legal consequences. The TM symbol usually means an unregistered trademark, indicating that a company asserts rights over a brand or logo that is perhaps still under registration.

    The ® symbol, on the other hand, represents a registered trademark, providing greater legal protection under the Trademarks Act, 1999 in India and other foreign trademark legislations. This article examines the meanings, applications, legal implications, and branding effects of the TM and ® symbols to enable businesses to make informed choices in asserting and defending their intellectual property.

    With expert trademark registration services, TMWALA can help businesses navigate this process, ensuring proper use of symbols and compliance with applicable laws.

    Knowing the distinction between the TM (™) and R(®) symbols is important since it can help you promote your brand identity. After completing the Trademark Registration process in India, there are no restrictions on where the ® symbol can be placed.

    WHAT DOES THE TM (™) SYMBOL MEAN?

    When products have applied for Trademark Registration, they are frequently branded or advertised using the TM (™) sign, which indicates an unregistered trademark. This indicates that you claim trademark rights over the mark. After text, images, or other content that they claim to be their own but have not yet formally registered with a regulatory body, businesses may use the trademark superscript, ™. Sometimes companies will use ™ to signify that they have applied for registration or that this is their first use. From a business standpoint, it implies that the person marketing a certain good or service thinks it is unique.

    WHAT MAKES USING THE TM SYMBOL CRUCIAL?

    Because it alerts consumers that you are trying to register the mark, which is protected by common law rights, it is essential to use the TM symbol for trademarks. If you don’t use the TM symbol, customers might not identify your mark as a trademark.

    The TM emblem safeguards your common law rights to the mark and alerts possible infringers that you believe it is currently in use.

    WHAT DOES THE R (®) SYMBOL MEAN?

    A product is a Registered Trademark if it bears the R (®) symbol. This indicates that the logo is protected by law under the 1999 Trademarks Act. Trademark Registrations are valid for ten years, however, they can be extended by going through the renewal procedure. A person or company may face trademark infringement charges if they use the registered name, logo, or symbol without the owner’s prior permission.

    WHAT MAKES USING THE ® MARK CRUCIAL?

    When it comes to registered trademarks, the ® symbol is essential since it alerts consumers that the mark is protected by federal law. If you don’t use the ® symbol, customers might not know that your trademark is registered.

    On the other hand, the ® sign notifies potential infringers that your mark is registered with the USPTO and deters potential infringers by demonstrating that you have a valid claim to the mark.

    FOLLOWING ARE THE KEY DIFFERENCES BETWEEN TM (™) AND R (®)

    The ® and ™ symbols are interchangeable for the average person. However, that is untrue. The symbols ® and ™ have several meanings. Usage Following the successful registration of the company’s trademark, the ® symbol may be used.

    However, if a trademark for the specific commodity or service is still pending registration, the ™ symbol may be used. The ® symbol cannot be used in certain circumstances because the mark has not yet received approval.

    Three differences exist between the TM and ® symbols:

    1. When they’re used
    2. Their meaning
    3. Their influence

    Usage

    The TM symbol can be used with both registered and unregistered trademarks, while the ® symbol is only allowed for registered trademarks. You can’t use the ® symbol unless you’ve registered your trademark with the USPTO.

    The ® symbol is only permitted for registered trademarks, whereas the TM symbol can be used regardless of whether your brand is registered with the USPTO.

    Meaning

    The ® symbol denotes that a trademark is registered with the USPTO and is protected by federal law, whereas the TM symbol indicates that someone asserts exclusive rights to a trademark, which may or may not be registered.

    Influence

    Since the TM symbol lacks federal protection, it is less potent than the ® symbol. Even so, adopting the TM symbol can assist in shielding your trademarks from infringement and avoiding consumer confusion.

    The Legal Aspects Concerning

    • The ® mark is legally protected and penalized for copying
    • The ™ trademark symbol has no legal support or advantage.

    Branding Purpose:

    • While awaiting the process to be finished, the ™ symbol typically indicates a preference for the brand identity of the business, organization, or person.
    • You will feel more confident using your intellectual property to develop strong brand equity if you utilize the ® symbol to market your goods or services.

    TMWALA can assist you not only in registering your trademark but also in monitoring and enforcing it, ensuring that your brand identity stays secure from misuse and infringement.

    CONCLUSION

    The main distinction between the two symbols is that one (TM) is used with a mark that is not registered, and the other (R) is used with one that is registered. Knowing the distinction will be beneficial to those looking to protect their brand because the user of just TM may be a notification, and the infringement of the brand by any other party will not be treated as a serious issue. Proper use of these symbols will also make the brand of the business strong and prevent the brand from being misused by unauthorized persons.

    In India and worldwide, the business has the liberty to label its products using the symbol (TM) and (R), and it can use it in its company’s name as well. Always use these symbols according to the norms of the applicable laws.

    With end-to-end trademark solutions from filing to post-registration support, TMWALA empowers businesses to take full control of their brand protection journey.

  • TRADEMARK SEARCH REPORT

    INTRODUCTION

    Trademark search report is the first step taken by an individual, company or any other person when they need to know whether a specific mark exists, or they want a mark to get registered. Conducting a Trademark Search helps in ensuring that the logo, slogan or mark is unique and distinctive in nature. Trademark search reports becomeuseful in identifying the marks that can arise conflict or infringe the right of the owner of the mark. Trademark search is a very simple and easy process to do, anyone can do it.

    The result of Trademark search is based on the product description, which class it belongs too, which word or mark is being used. It not only shows the existing marks but also their present status like whether the mark is registered, opposed, abandoned etc.., In this article we are going to discuss what is Trademark, the importance of Trademark Search, types of Trademark Search, the process of Trademark Search, how it can be used as evidence and common mistakes during Trademark Search.

    WHAT IS TRADEMARK?

    A Trademark is a form of intellectual right property that distinguishes one brand’s goods and services with other brands goods and services. A trademark consists of a word, phrase, insignia, symbol or combination of all in one. The Trademark identifies that a particular goods or service belongs to whom, if anyone else tries to have the same mark for their goods or service the owner has the right to claim opposition as he has exclusive right on that Trademark.

    THE IMPORTANCE OF TRADEMARK SEARCH REPORT

    Trademark Search is an excellent example of ‘Precaution Is Better Than Cure’, as it can help in identifying the mark which can cause conflict in future. Conducting a Trademark Search is important as it can minimize the risk of investing in a mark that is already being used by some other party. It helps you to avoid any kind of legal dispute which can occur by using such mark and it also helps in saving your money from those legal processes which you may face using that disputed mark.

    TYPES OF TRADEMARK SEARCH

    In India various type of Trademark search can be done based who that trademark is going to be used by the Applicant, few of them are: –

    Phonetic search:

    It is done to find out that if there is any mark which soundsto the mark you are applying for, the words can be different but do those two marks sound similar? For example, Organic and Organik or Frooti and Fruiti

    Exact match:

    It is the most basic trademark search as it used to find the identical word to that of the proposed mark.

    For example: AYN and AYN

    Class wise search:

    There is a total of 45 classes of trademark, class 1 to 34 is for goods and 35-45 is for services. The class wise search ensures that no identical mark as of proposed mark exists in same class.

    For example: class 9 electronics, marks Sony and Soni

    Comprehensive search:

    Comprehensive search is in depth search of a mark, it includes all the above-mentioned searches and search of the status the similar mark whether it is opposed, abandoned or pending.

    THE PROCESS OF TRADEMARK SEARCH

    The Trademark Search is done by using the Trademark Registry online data, the search can be done by anyone by the following process:

    Visit the Trademark Registry’s official website Official website of Intellectual Property India

    Go to related links, there you find public search

    Click on public search, then it will ask permission to proceed to external site, click on yes

    You will reach the public search page, which looks like this:

    • Then fill in the required information on this page, for example
      • Search type: – type of search you are conducting (e.g. wordmark)
      • Wordmark: – type the wordmark you are searching for (e.g. AYN)
      • Class: – type the class in which you are searching for (e.g. 45)
      • Enter the code shown above: – carefully enter the captcha (e.g. 12345)

    • Search: – Last step is to click the search button, you will get all the similar existing trademark registered in Trademark Registry, like

    HOW IT CAN BE USED AS EVIDENCE

    Trademark Search Report can work evidence in Trademark infringement case where you must prove that you have taken the mark in good faith and in a bona fide intention.

    The Trademark search report includes details of every mark whether they were opposed, pending or abandoned, and if you have taken a mark which was abandoned by its prior user then your intention of applying that mark is in good faith, and this can benefit you in a Trademark infringement case.

    COMMON MISTAKES DURING TRADEMARK SEARCH

    While conducting a trademark search people usually make these mistakes: –

    • Not doing phonetic search: people usually do word mark search if it’s clear they think that there will be no conflict in registering this mark, but the phonetically similar sound can be a challenge later.
    • Not considering unregistered mark: this sounds confusing, how can an unregistered mark be a problem, but it can. If someone in the local area has been using a similar mark for a very long period, then they claim that they are the prior user of the mark which will eventually create a big problem for the present Applicant.
    • Filling the mark without an attorney:Trademark attorney or professionals make sure to check and clear every aspect related to your Trademark Registration. So contact TMWALA if you need any guidance regarding your Trademark Search or Trademark Registration.

    CONCLUSION

    Conducting a Trademark Search is the very first and most crucial process in Online Trademark Registration process. It ensures that your proposed Trademark does not infringe someone else’s Trademark rights. It also provides clarity about whether you should move forward with the present mark or not. A through Trademark Search by yourself or with the help of a profession can help you save a lot of your time, money, energy and help you avoid future conflicts, legal troubles and unnecessary hassle in the long run. 

  • Ethical Considerations in Trademark Law: Why Playing Fair Matters

    Introduction

    In this age of competition, the name, logo, and identity of a brand are everything. Brands are recognized by their names and logos, so that is part of the reason people trust them. But what if somebody unjustly replicates a well-known brand’s emblem or title?

    This is where the ethical aspects of trademark law come in.There’s more to trademark law — registering logos or slogans — than just trademark law; it’s also about doing the right thing.

    Being ethical means that you play fair, that you respect other people’s work, and that you do not mislead customers.

    Let’s break this down to understand what it means in layman’s terms.

    What is a Trademark?

    A trademark can be a sign, symbol, word, or logo that helps people identify your business or product.

    For example Nike Swoosh, the McDonald’s golden arches or the Apple logo have become so synonymous with the companies that you can tell immediately who owns them.

    Trademarks provide confidence to consumers that they know what they are purchasing.

    This is why it’s so important that trademarks are used fairly and ethically.

    What Are Ethical Considerations in Trademark Law?

    Ethics in trademark law is about ensuring that:

    • You don’t replicate someone else’s brand.
    • You can make a ton of products under one logo or product line without confusing the customer into thinking they are all alike.
    • You are sensitive towards cultural and religious sentiments.
    • You don’t use trademarks in a way that damages the business or reputation of others.

    It’s about being honest and fair with your making and using your brand.

    Why Are Ethics Important in Trademark Law?

    The ethics in trademark law matter because:

    1. Protects Honest Businesses: If anyone was allowed to copy brands freely, this would harm original creators. Ethics safeguard people who work tirelessly to create their brands.
    2. Prevents Customer Confusion: Consider if you bought a sneaker designed to look like a Nike shoe, and when you bought it realized it was not the real thing — you would feel ripped off. We have ethics that guard against that kind of confusion.
    3. Encourages Creativity: Ethics, on the other hand encourage businesses to forge their own unique identities rather than imitating.
    4. Respects Society and Culture: Trademarks cannot offend public sentiments or tarnish religious symbols.
    5. Builds Long-Term Trust: In fact, ethical branding creates cult-like consumers who will trust you for years to come.

    Best Practices and Alternatives: A Case for Ethics

    Let’s understand this with simple examples:

    Ethical Practice

    • Creating a Unique Logo: Rather than copying, you come up with yourown new logo.
    • Choosing An Original Brand Name: You do not use names that are similar to known brand names.
    • Respecting National Symbols: You are not disrespecting a national flag or a religious symbol in your brand.

    Unethical Practice

    • Copying a Famous Logo: Creating a logo that was close to Nike’s Swoosh and deceiving customers.
    • Using Confusing Brand Names: We’re talking about Naming your company ”Adibas” to get people to think its Adidas.
    • Disrespecting religious Values: Using sacred images or holy slogans just to gather attention without understanding their meaning.

    Ethical Guidelines under Indian Trademark Law

    There are also some ethical rules enshrined within the Trade Marks Act, 1999 in Indian law:

    • The examiners also accept that you cannot register a trademark that offends religious sentiments.
    • You cannot register anything that is immoral or against public order.
    • You cannot trademark something too alike an existing brand.

    It safeguards that trademarks are not misleading, fair, and honest.

    How Young Entrepreneurs Can Be Ethical

    If you are a young entrepreneur launching a brand, this is what you can do to remain ethical:

    • Research Before You Create: Ensure your logo or name isn’t too similar to another person’s.
    • Respect Culture and Religion: Be sensitive in how you use names, images or slogans.
    • Be Original: All of your idea’s have more impact than ones you have taken from someone else.
    • Register Your Trademark: Legally protect your creativity so that no one else can abuse it.

    It is good for all of us, and ultimately, it is good for your brand success too!

    Ethics and Global Trademark Practices

    There is a lot of emphasis on ethical trademark practices even at the international level (WIPO – World Intellectual Property Organization):

    • Equal fairness is expected from global companies.
    • Trademarks that deceive, confuse or are harmful to public interests are prohibited.
    • No matter, whether you’re a small business owner in India or a big startup dreaming international, ethics matter everywhere.

    Conclusion: Ethics = Stronger Brands

    It is not about who files first

    It’s about who plays fair.

    Ethical considerations ensure that:

    • Good businesses thrive.
    • Customers are happy.
    • Innovation continues.

    Young innovation entrepreneurs need to remember that success without values is temporary.

    But success in the realm of ethics, engenders trust, loyalty and respect — the cornerstones of any great brand.

    Thus, create your brand with creativity, guard it with trademark law and reinforce it with ethics.

    Because, after all, playing fair is the smartest business strategy!

    “Create Uniquely. Protect Legally. Grow Ethically.”

    Author Details: Aditya Krishna Gupta, 3rd year, BA LL.B. ,Jiwaji University, Gwalior 

    Reference Links:

    https://www.wipo.int/trademarks/en

    https://www.businesstoday.in/latest/corporate/story/patanjali-trademark-disputes-brand-name-legal-row-255678-2021-06-15

  • SECTION 28 OF THE TRADE MARKS ACT, 1999

    The Trade Marks Act, 1999 provides legal protection to registered trademarks, allowing owners to exclusively use and also to sue other trade marks for infringement. This exclusive right to use the registered trademark is provided under section 28 of the Trade Marks Act. 

    This article discusses the provision of section 28 of the Trade Marks Act in detail:

    Section 28(1) of the Trade Marks Act:

    Section 28(1) of the Trade Marks Act provides two rights to the Registered Proprietor:

    1. Exclusive right to use its registered trade mark: The Registered Proprietor has sole authority to use its registered trade mark.
    1. Right to seek relief in case of infringement: By virtue of exclusive right or sole authority over a registered trade mark, the Registered Proprietor has right to take legal action and seek relief against any person who is using the trade mark similar to its registered trade mark in any manner or such unauthorised use leads to confusion or deception amongst consumers or even general public.

    However, it is to be noted that such exclusive right to use a trademark is limited to specific goods or services in respect of which the trade mark obtained registration. In addition, the exclusive right granted under section 28(1) of the Trade Marks Act is not absolute and are subject to provisions of the Trade Marks Act.

    Illustration:

    A person ‘X’ got the trademark ‘Flewbee pretty’ registered for clothes and footwears. Later, ‘Y’ applied for registration of the same mark for the same goods. ‘X’ can stop ‘Y’ from using the same mark by taking legal action against him as ‘X’ have exclusive right to use the mark ‘Flewbee pretty’ for clothes and footwears by virtue of Registration under the Trade Marks Act.

    For more on trademark infringement and legal actions, visit WIPO’s Trademark Guide.

    Section 28(2) of the Trade Marks Act:

    The exclusive right conferred by section 28(1) of the Trade Marks Act to the registered proprietor to use the registered trade mark is not absolute. This exclusive right to use the registered trade mark is subject to conditions and limitations imposed on the trade mark while granting it registration.

    The conditions or limitations might be geographical, restriction on style or design of the mark, etc.

    Illustration:

    A person ‘X’ got his trademark ‘Flewbee pretty’ registered for clothes and footwears with the condition that the same shall be used only in the region of Madhya Pradesh and Maharashtra (Geographical condition). Later, ‘Y’ applied for registration of the same mark ‘Flewbee pretty’ for the same goods to be used in ‘Chandigarh’. ‘X’ cannot stop ‘Y’ from using its trade mark, as ‘X’ has exclusive right to use the trade mark ‘Flewbee pretty’ only in the region of Madhya Pradesh and Maharashtra.

    Section 28(3) of the Trade Marks Act:

    Section 28(3) of the Trade Marks Act provides that in case two or more persons have identical or similar registered trade marks, the exclusive right to use one registered trade mark does not extend against other similar registered trade marks. In simple words, it is clear that the However, the owners of such similar registered trade marks will have same rights against other persons using the trade mark similar to their registered trade mark. 

    Illustration:

    ‘X’ has registered Trade Mark ‘Flewbee pretty’ and ‘Y’ has registered trademark ‘‘Flewby pretty’’. Both the trade marks are similar, however, neither ‘X’ nor ‘Y’ can take any action against each other. But if ‘Z’ uses the mark ‘Flewbii pretty’ and the same is unregistered. Both ‘X’ and ‘Y’ will have same right to take action against ‘Z’.

    Case Law related to section 28 of the Trade Marks Act:

    P.M. Diesels Private Limited v. Thukral Mechanical Works

    In this case, it was decided that since both parties were registered proprietors of identical trade marks, although for different kinds of goods, neither the plaintiff nor the defendants had the right to file a lawsuit against the other. However, in the event that the trademark was violated by any third party, they would have the right to pursue legal action against any third party. To get in more depth about this case

  • SECTION 27 OF THE TRADE MARKS ACT, 1999

    The Trade Marks Act, 1999 provides legal protection to registered trademarks, allowing owners to exclusively use and also to sue other trade marks for infringement. Section 27 of the Trade Marks Act also provides statutory protection to unregistered trademarks by upholding common law rights through the passing-off principle. In accordance with section 27 of the Act even though an unregistered trademark cannot be protected through an infringement case, the owner may still pursue legal action if someone tries to mislead consumers or damage the company’s reputation by abusing the mark.

    Let’s discuss section 27 of the Trade Marks Act, 1999 in detail.

    Section 27(1) of the Trade Marks Act:

    According to Section 27(1) of the Trade Marks Act an infringement suit cannot be filed against an unregistered trademark i.e. the trade mark not registered under the Trade Marks Act, by any person. 

    Illustration: 

    A person ‘X’ uses a trademark ‘PickliBoo’ for confectionery goods. The trademark ‘PickliBoo’ of ‘X’ is not registered under the Trade Marks Act. If other person ‘Y’ copies the mark ‘PickliBoo’, ‘X’ cannot file an infringement suit against the copied trademark of the ‘Y’ since the mark ‘PickliBoo’ is not registered by ‘X’. 

    Section 27(2) of the Trade Marks Act:

    Section 27(2) of the Trade Marks Act protects registered as well as unregistered trade mark. This section recognises common law rights of the trade mark owner to take action against any person for passing off goods or services as the goods or services of another person. Accordingly, even if a trade mark is not registered, the owner of such trade mark can still take action under the common law principle of passing off. 

    And, for this, the owner of the unregistered trade mark must prove that the said trade mark has reputation and goodwill in the market, there has been misrepresentation in the market and owing to this the use of the other copied mark would substantially damage the business of the owner of the unregistered trade mark.

    Illustration:

    A person ‘X’ uses a trademark ‘PickliBoo’ for confectionery goods. The trademark ‘PickliBoo’ of ‘X’ is not registered under the Trade Marks Act, however, enjoys substantial goodwill and reputation in the market and have extensive market base. If other person ‘Y’ copies the mark ‘PickliBoo’, ‘X’ can file a Passing off suit against the copied trademark of the ‘Y’.

    Conclusion

    In conclusion, section 27 of the Trade Marks Act restricts legal action for infringement to registered trademarks only. Nonetheless, it recognizes passing off as a powerful remedy to protect business reputation and goodwill for unregistered trademarks.

    Learn more about common law rights and passing off at WIPO and IP India.

    Register your trademark with us starting at only Rs. 999/-