Trade Marks, Well-known marks and Domain Names

Definition of trademark

A trademark is a type of intellectual property consisting of a recognizable sign, design, or expression which identifies products or services of a particular source from those of others.  Trademarks used to identify services are usually called service marks.  Trademarks may protect signs, in particular: words, letters, numerals, abbreviations, graphical representations, combinations of colors and the tints thereof, three-dimensional forms, shapes of the goods or the packaging, provided that they are distinctive, as well as the combinations of all the above indicated signs.  A seal, a stamp and a hallmark shall not be considered to be trademarks.

Functions of a Trademark

A trademark serves the purpose of identifying the source or the origin of goods. Trademark performs the following four functions.

·  It identifies the product and it’s origin.

·  It guarantee its quality.

·  It advertises the product. The trademark represents the product.

· It creates an image of the product in the minds of the public particularly the consumers or the prospective consumers of such goods.

How is a trademark protected?

Trademarks are protected by intellectual property rights.  At the national/regional level, trademark protection can be obtained through registration, by filing an application for registration with the national/regional trademark office and paying the required fees.

How is a trademark registered?

At the national/regional level, trademark protection can be obtained through registration, by filing an application for registration with the national/regional trademark office and paying the required fees. At the international level, there are two options: either we can file a trademark application with the trademark office of each country in which you are seeking protection, or you can use WIPO’s Madrid System.

The application must contain a clear reproduction of the sign filed for registration, including any colors, forms, or three-dimensional features. The application must also contain a list of goods or services to which the sign would apply.  The sign must fulfill certain conditions in order to be protected as a trademark or other type of mark. It must be distinctive, so that consumers can distinguish it as identifying a particular product. It must neither mislead nor deceive customers or violate public order or morality. The rights applied for cannot be the same as, or similar to, rights already granted to another trademark owner. This may be determined through search and examination by the national office, or by the opposition of third parties who claim similar or identical rights.

How long is a registered trademark protected for?

The term of trademark registration vary, but is usually ten years. It can be renewed indefinitely on payment of additional fees. Trademark rights are private rights and protection is enforced through court orders.

How extensive is trademark protection?

Almost all countries in the world register and protect trademarks. Each national or regional office maintains a Register of Trademarks which contains full application information on all registrations and renewals, facilitating examination, search, and potential opposition by third parties. The effects of such a registration are limited to the country concerned.

In order to avoid the need to register separately with each national or regional office, WIPO administers a system of international registration of marks. This system is governed by two treaties, the Madrid Agreement Concerning the International Registration of Marks and the Madrid Protocol.

What are well-known marks and how are they protected?

The term 'well-known trademark' refers to a mark which has become so well-known to the substantial segment of the public through its extensive and continuous use. Use of the mark in relation to any other goods or services by another party may be taken as a connection between the two parties.

In India, there are specific provisions under the Trade Marks Act, 1999 and procedure to record well known trade marks in India is provided under the Trademarks Rules, 2017 enacted under the Act, 1999.

As per the Trade Marks Rules, 2017, an application is required to be filed (online) at the Trade Marks Registry supported by evidence of use. The Trade Marks Registry, Mumbai reviews the application filed to verify the filing requirements. Thereafter, hearing is appointed at Mumbai Trade Marks Registry to present the case. If the hearing officer is convinced that the trade mark should be declared as a well-known trade mark, the trade mark is advertised in the Trademarks Journal (TMJ) inviting objections from the general public within 30 days from the date of publication in the TMJ. If, no objections are received, the trade mark is advertised in the trade mark is advertised in the TMJ and included in the list of well-known marks.

Examples are Whirlpool, ENFIELD BULLET, HONDA, HORLICKS, Infosys, etc.

Domain name

A domain name is an identification string that defines a realm of administrative autonomy, authority or control within the Internet. Domain names are used in various networking contexts and for application-specific naming and addressing purposes.  A trademark or service mark promotes and protects the brand name, while a registered and protected domain name provides protection against any unauthorized use of domain name by any person or entity.  Often a business will use its business name, brand name or another business identifier as its domain name.

Unlike trade marks, domain names are:

·         global

·         unique by nature

·         can't be shared between two websites

Registering a domain name doesn't automatically give us any rights over the matching trade mark. Trade mark right can be obtained only by registering the domain name as a trade mark.

	Domain name	Trade mark
Definition	A domain name is a unique string of letters that is a part of an internet address. It is common for a domain name to be the same or similar to a trade mark or a business name.	A trade mark is any sign which can tell apart your goods and services from those of your competitors.
Uses	Domain names are used to locate and bring users to a specific website or place on the internet.	A trade mark is used to identify and distinguish your goods or services in the marketplace.
Need to Register	Yes. Can submit a registration to any ICANN-accredited registrar. Registering a domain name gives you exclusive rights to use that domain for the duration of the license period.	No, but it in most cases it would be wise to do so. You can protect a registered trade mark by law.
Do it expire?	Yes. And can renew indefinitely (subject to paying renewal fees on time).	Yes. Generally after ten years, after which we can renew the trade mark registration.