PROTECTION OF TRADEMARKS AND BRANDS ONLINE

Written By: Akangsha Majumdar, Presidency University Shrey Sinha, CLC Faculty of Law, Delhi University Padmalaya Kanungo, Symbiosis Law School, Hyderabad Edited By: Dyuthi S, Symbiosis Law School, Pune

Introduction: “Trademark” refers to a distinctive sign which identifies particular set of goods or services along with its owner or originator. It also indicates specific qualities of goods and services along with adding reputation to them on continuous use for years. The Trademarks Act,1999 (TM Act) defines “trademark” as any mark which can represented graphically, is capable of distinguishing the goods or services of one person from those of others and may also include shape of goods, packaging and combination of colours. Few examples of trademark are Adidas, Nike, Pepsi, McDonalds etc. The TM Act defines “mark” as to include a device, brand, heading, label, ticket, signature, word, letter, numerals, shape of goods, packaging or any combination of colours. It also extends to include non-conventional signs such as sound, smell, moving images, taste and texture. It is an alternative way of referring to “brands”. ❖ Need for Trademark Protection: Trademarks serves as the identification mark of the specific brand or company through which its products can easily be distinguished from other competitors. They are an effective means of communication as they are carriers of reputation and goodwill of the trader and guarantees the consumers with some assured quality. The brands or trademarks which are well-known or popular, faces certain challenges due to unfair trade practices adopted by some traders like using similar trademarks for marketing their goods, counterfeiting of goods, passing-off of goods of inferior quality as their goods etc. which disparages or dilutes their existing reputation. With the introduction of internet including social media, the companies are increasing their online presence which is now considered to be an integral strategy to expand their reach to the consumers. The companies due to increasing online presence has now become susceptible to various forms online infringement and abuse of their brands like selling of counterfeiting goods through internet, unsolicited emails, phishing, cybersquatting etc. Trademark protection refers to protection of trademark from their fraudulent use on goods and services. Trademark protection fulfills two objectives i.e. protection of individual interest of proprietor or the user of the trademark and protection of societal interests. Protection of the individual interests of proprietor of trademark means protection of his commercial interests i.e. exclusive use of or monopoly over the registered trademark and providing the reliefs in case of breach for such use or monopoly by any other person. This also includes right to transfer his rights over the trademark to any interested person by granting license and protection of goodwill and reputation of goods or services as well as himself represented through the mark. The trademark identifies the origin of the goods and services as well as indicates their quality in interest of the society. In this way, it protects the consumers from being deceived by wrong goods or false indication of the origin of the products. ❖ Online Protection of Trademarks: Social media is the most active and rising platform in today’s time. A virtual platform has become an integral part of business expansion strategies. It gives companies a wide chance to build brand recognition. And a trademark is an essential piece towards creating brand recognition. However there are lot of risks in online platforms as the companies may face online infringement and brand abuse. Brands become a lot prone to damages in social media due to phishing, cyber-squatting, brandjacking and various internet malpractices. Infringers have a lot of options on the social media platforms and the internet through which they can benefit from any established company. The advantage for the infringers here is that they can do it anonymously. And the trademark owners struggle to overcome the damages caused due to the infringement and remain unable to recover it due to the anonymity of the infringer. All these can land the companies and their businesses into a lot of troubles. Therefore it is important for brands to protect their trademarks and apply trademark protection strategies to forfeit such scenarios. Companies often use their names as trademarks or opt for marks that plainly explain what the business does. Such mere descriptive marks are unprotectable and does not serve the main purpose of a trademark, i.e., to set itself apart from others in the market. Companies should opt for more unique and distinctive trademarks as they are stronger and more protectable. Deceptively similar trademarks will not be able to be protected with as much rigour. The term ‘deceptively similar’ used here implies that when a potential consumer comes across the mark, he\she is likely to be confused as to the origin of goods and services. After the selection of a proper trademark, companies should register it so that the owners who hold the registered trademarks can notify third parties and protect it from infringement. The companies should consistently start using their trademarks in their business. Domain names shall be obtained for the trademark. Obtaining a domain name as a trademark can enable the worldwide accessibility of the products and services of the company in a virtual platform and also protect the trademark. There should be a proper use of trademark notices as it alerts third parties of the company's rights and thereby protects it. The monitoring of the use of trademark is also important to keep in check the proper use of the mark on all social media platforms. Installation of proper surveillance mechanisms can help in monitoring trademark use by third parties and also monitoring the advertising, marketing or distribution stages where such infringement can cause defamation. The Trade Marks Act of 1999 and the Trade Marks Rules of 2002 provides protection of domain names in India. But any national or International trademark law may not be fully capable of protecting a domain name across the world. And therefore an effective dispute resolution policy was introduced by the ICANN [Internet Corporation for Assigned Names and Numbers] named as the Uniform Domain Name Disputes Resolution Policy (UDNDR Policy). While we discuss trademark infringement, it is important to note that there are two kinds of infringement, namely, direct infringement and indirect infringement. Direct infringement is dealt with in section 29 of the Act. So the main elements that have to be considered to constitute direct infringement of the trademark are as follows: i. Use of the registered trademark by an unauthorised person ii. The trademark that is being used by the unauthorised person needs to be identical or relatively similar to the registered trademark leading to confusion among the consumers between the two trademarks. iii. The law of trademark only protects the registered trademark and if there is a case of infringement of an unregistered trademark then it is the common law of passing off that is applied to settle the matter. iv. The goods and services of the infringer need to be similar or identical to the ones of the registered proprietor. Coming to indirect infringement, the trademarks act doesn’t have any provision to specifically deal with indirect infringement. It is the universal law principle that governs the indirect infringement. In the case of indirect infringement, both the direct/principal offender and the one who abets the principal offender are made liable. The two types of indirect infringement include vicarious liability and contributory infringement. Therefore, “any unauthorized use of the exclusive statutory rights of a registered trademark constitutes infringement.”. However, as per section 34 of the Trademarks Act, 1999 “the proprietor of a registered trademark or a registered user cannot interfere with the use of any identical or similar mark if the person has been using the mark from an earlier date”. Our legal system prohibits unfair competition by encouraging hard but fair competition in business. Punishments awarded in case of criminal proceedings include imprisonment up to a period of not less than six months which may extend up to three years and a fine of not less than Rs50, 000 that may extend to Rs 2 lakh.

Conclusion:

The internet and social media platforms have become very popular and much preferred platform to increase business. But with this online presence of brands there comes a need to protect brand names. The protection of trademarks or domain names have increased alarmingly as trademarks are a mark of the company’s identity. And with the rise of various internet malpractices by infringers, the companies stand at a huge risk of loss and harm to their reputation. It can directly harm their relations with their customers. Therefore, the implementation of proper trademark protection strategies by the companies can help in tackling any of such scenarios. The adoption of a strong and unique mark and the adequate surveillance upon the usage of the mark, the enactment of trademark strategies and the enforcement of the proper rights are essential in protecting a company’s trademark on all online platforms.

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