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Tag: Trademark Law

  • 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

  • OPERATION SINDOOR TRADEMARK CONTROVERSY

    A PIL (Public Interest Litigation) was filed before the Supreme Court of India, requesting to prevent the registration of the trademark ‘Operation Sindoor’, claiming worries over the commercial abuse or exploitation of the name of a sensitive military operation associated with India’s ongoing anti-terror operations. Dev Ashish Dubey filed the PIL, seeking to prevent the applicants from proceeding with their trademark applications under Class 41, which includes education and entertainment services, across multiple regional Trademark Registries.

    What is ‘Operation Sindoor’?

    ‘Operation Sindoor’ is a name given by the Indian Government to India’s mission against terrorist bases in Pakistan and Pakistan-occupied Kashmir following the 22 April 2025 attack on 26 civilians in Pahalgam, Jammu and Kashmir. In response to the terror attack in Pahalgam, Indian forces launched missile attacks against 9 precise terror targets in Pakistan and Pakistan-occupied Kashmir early on May 7, 2025. India’s attack was retaliatory, measured, and non-escalatory. The targets of this strike included several launchpads and terrorist bases, including a base of Lashkar-e-Taiba in Muridke and the Jaish-e-Mohammad stronghold of Bahawalpur.

    Background

    Reliance India Limited (RIL), amongst 6 other applicants, applied for trademark registration for the mark ‘Operation Sindoor’ under trademark Class 41, which includes services inter alia“education and entertainment”.

    Besides RIL, six additional applicants have applied for the mark ‘Operation Sindoor’. All of the applicants listed below filed for registration under Class 41 and one under Class 41 and Class 09 both, of the Nice Classification on May 7 between 10:42 a.m. and 6:27 p.m., which includes education and training services, film and media production, live performances and events, digital content delivery and publishing, and cultural and sporting activities.

    Other entities that applied for a trademark for ‘Operation Sindoor’:

    1. Mukesh Chetram Agrawal

    It’s said the applicant filed the second application on May 7, seeking to register both the wordmark and the image under Class 41.

    2. Kamal Singh Oberh, a retired Group Captain and Air Force Officer

    It’s said the applicant applied for a trademark for the entire phrase “Operation Sindoor”. The trademark would be used for “entertainment, film production, cultural activities, and web series production,” according to the application.

    3. Alok Kumar Kothari

    Another application was filed by Alok Kumar Kothari, a Delhi-based lawyer. He sought to use the wordmark to promote “education, training, entertainment, sports, and cultural activities.”

    4. Prabhleen Sandhu

    On May 7, Mumbai-based Prabhleen Sandhu, the producer of Almighty Motion Pictures, applied for a wordmark for ‘Operation Sindoor’, primarily for entertainment purposes.

     5. Jayaraj T

    Filed under both Class 41 and Class 09- reflecting a wider use in technology and media.

    6. Uttam Jaju

    Uttam Jaju, a Surat-based ad filmmaker, filed another application on May 8. Jaju requested registration under Class 41 to use the wordmark ‘Operation Sindoor’ for entertainment purposes, as well as a trademark use for arranging “award ceremonies and gala evenings” for entertainment purposes, as well as major corporations and individuals who have made significant charitable contributions.

    Petitioner’s contention

    The petitioner claims that the name “Operation Sindoor,” which refers to the Indian military’s operation against terror infrastructure in Pakistan, is deeply symbolic and linked to national sentiment, particularly on the night of April 22, 2025, the Pahalgam terror attack, which killed innocent civilians.

    In the application, it was contended that “The operation involves the emotions of not only the countrymen but also of those who have sacrificed their lives for the nation.”
    It contends that allowing the trademarking of “Operation Sindoor” for commercial or entertainment purposes would be exploiting the public sentiment and dishonoring the sacrifice of soldiers.

    The petition also points to Section 9 (Absolute ground for refusal) of the Trade Marks Act of 1999, which prohibits or restricts the registration of names that may be offensive to the public sentiment or be detrimental to the national interests.

    Reliance’s contention in the application for ‘Operation Sindoor’

    Under Class 41, trademarks grant the right to exclusively utilize the word-type trademark. According to the application’s goods and services description, Reliance intended to use it for entertainment purposes, such as the production, presentation, and distribution of audio, video, or still and moving images and data using the trademark. Reliance eventually withdrew their trademark application for ‘Operation Sindoor’, noting that it has no intention of “trademarking ‘Operation Sindoor’, a phrase which is now a part of the national consciousness as an evocative symbol of Indian bravery”.

    It further clarifies stating that “Jio Studios, a unit of Reliance Industries, has withdrawn its trademark application, which was filed inadvertently by a junior person without authorisation”. It also contended that, “Reliance Industries and all its stakeholders are incredibly proud of ‘Operation Sindoor’, which came about in response to a Pakistan-sponsored terrorist attack in Pahalgam. Operation Sindoor is the proud achievement of our brave Armed Forces in India’s uncompromising fight against the evil of terrorism. Reliance stands fully in support of the government and Armed Forces in this fight against terrorism. Our commitment to the motto of ‘India First’ remains unwavering.”Statement issued by Reliance https://x.com/RIL_Updates/status/1920415039489446161

    Legal context of the case

    Although there are no as such explicit restrictions that restrict individuals or entities from applying for a trademark application, which are mainly associated with military operations and government terms.

    The Government of India has the right to oppose such applications under Sec 9 (2) (c), (d)of TMA,1999.

    Section 9(2) (c), (d)in The Trade Marks Act, 1999

    (2)A mark shall not be registered as a trademark if—

    (c)It comprises or contains scandalous or obscene matter;

    (d)Its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950 (12 of 1950). (Sec 4 (b) of the act states, register a trademark or design which bears any emblem or name,)

    As the application alleges that the said trademark application is violative of Section 9 of the Trademarks Act, 1999, which talks about the absolute ground for the refusal of a trademark application. It prohibits or restricts the registration of marks which are misleading, scandalous, harmful to public order or decency, or hurt the religious sentiments of the public. “The said name cannot be allowed to be registered as it conflicts with the public interest and sentiments,” the petition claimed.

    In Conclusion

    The petitioner, via his legal team, AOR Om Prakash Parihar and Advocate Dushyant Tiwari, has demanded two major steps from the court. A direction to restrict or stop the Trademark Registry from further registering the word ‘Operation Sindoor’ that is filed by private individuals. A directive to remove all current trademark applications for the same from the registry.

    Author: Suhani Sharma

  • 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.

  • 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.

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