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Trademark Protection and Risk of Common Usage

Aug 25, 2006
Manisha Singh Nair

Apple Computer, as an example

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Defining a trademark, it can be said that it is a distinctive sign which distinguishes the goods or services produced or provided by a particular enterprise from those of another.

Article 15 of the TRIPS Agreement lays down what all are registrable as trademarks. It reads:

"Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark. Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colors as well as any combination of such signs, shall be eligible for registration as trademarks."

In India, as per section 2 (m) of the Trademarks Act, "mark" includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colors or any combination thereof.

Thus as law provides, any distinctive words, letters, numerals, drawings, colours, pictures, shapes, logotypes, labels or combinations of the above, which are used to distinguish between the goods and services of different companies may be considered a trademark.

While words are being registered an aspect that has to be ensured is that it has to be distinctive as against generic. But it can include coined or fanciful words. These coined or fanciful words have the advantage of being easy to protect as they are mostly inherently distinctive. Words chosen as trademarks could also be those that qualify as arbitrary marks. Arbitrary marks are those which have a meaning that bears no relation to the product they advertise. An example of this type can be Apple Computers. There is yet another category, suggestive marks which are marks that hint at one or more of the attributes of product.

Once a mark is registered what that needs to be ensured next is its proper use. This becomes crucial especially for maintaining them. Proper use preserves a mark's ability to identify the origin of products or services, and increases its potential for "secondary meaning." Further it also minimizes the likelihood that the mark will become generic, or be abandoned. Proper use also strengthens trademark registrations, and overcomes defenses raised in trademark litigation. Thus the diligent use of a trademark by an owner becomes significant while discussing trademark rights.

In this context the following terms that began as trademarks may be referred to. "Escalator," "shredded wheat," "kerosene," "aspirin," "yo-yo," "zipper," and "trampoline," which were trademarks, through lack of proper use, and/or enforcement, became generic. Today, any company may use them to describe certain types of products.

When a product becomes successful and attains immense popularity, there arises every chance of similar products being launched with similar trademarks or the popular trademark being used by other market players in different domains. Herein it has to be noted that one of the main attributes of a trademark is that it helps the consumers to identify a product of a particular company and to distinguish it from other identical or similar products provided by competitors. Furthermore, an aspect that has been reiterated over the years is that a trademark gives an indication to the purchaser or a possible purchaser to the trade source from which the goods come. Thus when the trademark is used by other players in the market, it can give rise to issues regarding infringement of trademarks.

In this regard, the recent issue regarding the claim to the word "Pod" by Apple can be referred to. The portable media players called iPod were designed and marketed by Apple. Apple has now laid legal claim to the word "Pod," arguing that other companies that use the word as part of their product names, risk infringing the trademark of its popular iPod music player. Apple Computer by challenging products with names such as Profit Pod and and TightPod, is trying to prevent their best-known product names slipping into common usage beyond their control.

As Apple has moved towards filing trademarks infringement case, the issue focuses on the need for due diligence in following the use and maintenance of one’s own trademarks and the preservation of the rights arising out of a registered trademark.

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