Defensive registration of Trademarks & Certification Trademarks

By Bhargav.A 1MS09ME038

Introduction
A Trademark may consist of a word or invented word, signature, device, letter, numeral, brand, heading, label, name written in a particular style, the shape of goods other than those for which a mark is proposed to be used, or any combination thereof or a combination of colors and so forth. Subject to certain conditions, a trademark may also be symbolized by the name of a person, living or dead. For the purpose of registration, a mark chosen should be capable of distinguishing goods or services of one person from those of the others. Further it should not be deceptively similar to an existing mark of another person and not the one expressly prohibited under the Act. Under the Indian trademark law the following are the types of trademarks that can be registered:
y y

Product trademarks: are those that are affixed to identify goods. Service trademarks: are used to identify the services of an entity, such as the trademark for a broadcasting service, retails outlet, etc. They are used in advertising for services. Certification trademarks: are those that are capable of distinguishing the goods or services in connection with which it is used in the course of trade and which are certified by the proprietor with regard to their origin, material, the method of manufacture, the quality or other specific features Collective trademarks: are registered in the name of groups, associations or other organizations for the use of members of the group in their commercial activities to indicate their membership of the group

Defensive Registration of Trademarks

y Where a trade mark consisting of any invented word has become so well-known as respects any goods in relation to which it is registered and has been used, that the use thereof in relation to other goods would be likely to be taken as indicating a connection in the course of trade between those goods and a person entitled to use the trade mark in relation to the first-mentioned goods, then, notwithstanding that the proprietor registered in respect of the first-mentioned goods does not use or propose to use the trade mark in relation to those other goods and notwithstanding anything in section 46, the trade mark may, on application in the prescribed manner by such proprietor, be registered in his name in respect of those other goods as a defensive trade mark, and while so registered, shall not be liable to be taken off the register in respect of those goods under the said section. y The registered proprietor of a trade mark may apply for the registration thereof in respect of any goods as a defensive trade mark notwithstanding that it is already registered in his name in respect of those goods otherwise than a defensive trade mark, of may apply for the registration thereof in respect of any goods otherwise than as a defensive trade mark notwithstanding that it is already registered in his name in respect of those goods as a defensive trade mark, in liey in each case of the existing registration. y A trade mark registered as a defensive trade mark and that trade mark as otherwise registered in the name of the same proprietor shall, notwithstanding that the respective registrations are in respect of different goods, deemed to be and shall be registered as, associated trademarks.

y On application made in the prescribed manner to a High Court or to the Registrar, by any person aggrieved, the registration of a trade mark as a defensive trade mark may be cancelled on the ground that the requirements are no longer satisfied in respect of any goods in relation to which the trade mark is registered in the name of the same proprietor otherwise than as a defensive trade mark, of may be cancelled as respects any goods in relation to which it is registered as a defensive trade mark on the ground that there is no longer any likelihood that the use of the trade mark in relation to those goods would be taken as giving the indication mentioned in y The Registrar may at any time cancel the registration as a defensive trade mark of a trade mark of which there is no longer any registration in the name of the same proprietor otherwise than as a defensive trade mark. Except as otherwise expressly provided in this section, the provisions of this Act shall apply in respect of the registration of trademarks as defensive trademarks and of trademarks so registered as they apply in other cases. An increasing number of trade mark owners are registering defensive trade marks in order to protect their well-known trade marks in relation to goods or services which they do not actually sell.

For example, General Motors Holden (GMH) has registered the Holden trade mark as a defensive trade mark in relation to tires for motor vehicles even though it does not sell tires branded Holden. The effect of this registration is that it prevents other traders from using the Holden trade mark in this way, even though GMH has no sales, trading or reputation in relation to motor vehicle tires by reference to the trade mark Holden . The reason companies like GMH take such steps is because if another trader were to sell tires by reference to the Holden mark it is possible that consumers would assume it was a GMH product or that GMH had licensed, sponsored or endorsed the other trader s product. To stop the conduct without a trade mark can however be quite difficult as GMH would have to prove that consumers were likely to be misled. With a registered defensive trade mark all GMH would have to do is establish that the other trader s mark was the same as or deceptively similar to the Holden mark in relation to the same and/or similar goods/services.

A defensive trade mark allows the registered owner of a well-known trade mark to register a trade mark in relation to goods and/or services that it does not intend to use by reference to this trade mark. In order to achieve registration of a defensive trade mark its owner must show that use of the trade mark in relation to these other goods and/or services would be likely to be taken as indicating a connection between those other goods and services and the registered owner. The advantage of seeking registration of a defensive trade mark is that it prevents other people from taking advantage of the well known mark and/or a mark that is substantially identical to and/or deceptively similar with the well-known mark. It also reduces the potential costs that can be incurred by a well-known trade mark owner in opposing the registration of such trademarks and suing when the mark is used. It is important to note that the filing fee for a defensive trade mark is the same as that for a Standard trademark. The use of the same trade mark by third parties may cause confusion in the Market place by persons being led to believe that the goods/services of the third party are owned by the owner of the well known trade mark. The advantage of a defensive trade mark registration is that the evidence as to the extent of the reputation of the well known mark need only be submitted for the purpose of obtaining the defensive trade mark, and not each and every time that a case is submitted. Once a defensive trade mark is obtained, should an infringement occur, the trade mark owner will not need to prove its reputation, and can simply rely on the defensive registration and otherwise show unlicensed use of a trade mark which is substantially identical or deceptively similar to that registered. This can provide a trade mark owner with a more cost effective and efficient method of protecting its brand.

Certification trademarks
Certification trademarks: Are those that are capable of distinguishing the goods or services in connection with which it is used in the course of trade and which are certified by the proprietor with regard to their origin, material, and the method of manufacture, the quality or other specific features y "Certification Mark" performs a different role than a trademark. The certification mark is also capable of distinguishing the goods or services as the same is certified by the proprietor in respect to its origin, material, and mode of manufacture or performance of services, quality, or accuracy. For example, WOOLMARK, ISI etc. fall in the category of Certification Marks. The mark which is capable of distinguishing the goods or services in respect of its material, mode of manufacture, performance of service, quality or accuracy and are certified by the proprietor, are called Certification Marks. These marks can be used only in accordance with defined standards. y The function of a certification mark is not to indicate trade origin but to certify that goods or services in relation to which it is applied are certified by the proprietor of the mark as to certain characteristics of the goods or services. y The provisions for registration of trademark are equally applicable to certification marks also. y Assignment or transmission of certification marks is not allowed except with the consent of the Registrar of Trade Marks for which an application has to be made in the prescribed manner.

Conclusion
Trademarks are known to be a gesture of goodwill by which a company establishes its identity. These are essential to preserve and safeguard the policies and quality assurances given by companies through their products as they provide a method of addressing and preventing substandard copies of the same products from being sold or circulated within the society.