Trademark is given to provide legal protection to marks of the trade like brand
names, signs, symbols, logos, etc. It is an identity of certain products and
services which are provided by a certain person or entity. It is given for an
indefinite period which makes it different from other IPR. Trademark holder just
has to renew it from time to time. It is served as a mark of identification.
Considered the following things before filing an application for
- Selecting a distinctive mark
- Mark format.
- Identify goods and services.
- Research about the mark.
Why one should have a Trademark?
Basically, Trademarks work as a protection against goodwill. It saves the
goodwill of products and services from malice use. It gives value to the
products and services. It not only increases the reputation of products and
services but is also very beneficial commercially as well as economically. It
will increase the price of products and services in the market. It creates
difference and increases the market value of products and services. It makes
customers attracted to your product and services. For ex-Apple, Honda, BMW,
Benefits of Trademark:
- Secures the business
- Asset formation
- Increase in brand value
- Independent existence of business
- Creditability of the firm rises
- Right to use registered in the brand name
Infringement of Trademarks:
Infringement of Trademarks is punishable. Trademark can be registered or
unregistered. Unregistered marks are represented by TM and registered marks are
represented by ®. Registration is nothing but extra protection given to
trademarks. Registration certificate is considered as evidence in the courts.
Infringement of unregistered trademarks is called passing off. Passing off is
Basic elements of infringement and passing off are given below:
- Reputation, Misrepresentation, and Damages.
- Misrepresentation made by a person in course of trade to prospective
customers or consumers of another trader's goods and services, which injures
the trader's business or goodwill.
- Causing actual damage to the trade, business, or goodwill of the trader
by whom action is bought.
This agreement was established through the 1891 treaty and
1984 protocol. The purpose of this agreement is to provide single and
inexpensive international trademarks. Also to eliminate the need for filing,
prosecuting, or maintaining separate registration in multiple countries. Once
you will file an international application it will be reviewed separately by all
the member countries. The aim of mentioning this agreement here is just to
let know all the readers that the U.S.A is also part of this agreement.
Therefore all the rules and regulations of this agreement applied to U.S.A as
Trademark Laws In The U.S.A
In the US concept of a trademark is not very new. It was there since the
colonial period, but it was not there till 1870. Congress was the first who
attempt to establish a federal trademark regime in the U.S.A. In 1870 congress
made a statute to protect the trademark which was stuck down by the Supreme
Court in trademark cases. In 1881 congress again passed a trademark Act which
was reviewed in 1905. In 1917 a doctrine of Aunt Jemima was created which will
provide protection to trademark even when it will be used to sell different
For ex-TRD is a trademark of a company that sells toys that
business is not going on well therefore the company decided to sell footwear
under the same trademark. Then this will allow under the above-mentioned
doctrine. In 1946 congress passed the Lanham Act, 15 USC section 1051 et. Seq.
which had provided authority to the US patent and trademark office (USPTO) to
register marks used in interstate or foreign commerce. Recent developments in
U.S. trademark law have included the adoption of the Federal Trademark Dilution
Act of 1995, the 1999 Anticybersquatting Consumer Protection Act, and
the Trademark Dilution Revision Act of 2006.
As per Lanham Act, Trademark can be any word, name, symbol, device, or any
combination thereof. It also covers a particular type of shape as the shape of
the coco-cola bottle, particular sounds like NBC's three chimes, and particular
scents like plumeria blossoms on sewing thread.
Trademarks are divided into four categories which are given below:
Process of registering a trademark in the U.S.A
- Arbitrary and Fanciful:
Mark which is very strongly distinctive is called Arbitrary and Fanciful
Marks that are moderate or medium when it comes to
distinctiveness are called Suggestive trademarks.
Marks that are very weak in distinctiveness are called
Marks that have no protection are called Generic trademarks.
Who can be a trademark owner in the U.S.A?
- Application of registration can be filed offline as well as online.
There will be differences in the fees of online and offline applications
- After that it will be under observation for a few months.
- Eventually the USPTO trademark examiner will examine the application as
per the rules of the Trademark Manual of Examining Procedure.
- If he found any problem in the application, then it will be
preliminarily rejected by the examiner.
- After that applicant has 6 months' time to give a reply and try to
convince the examiner, if the examiner will convince the argument of the
applicant then it will be published in the Trademark Official Gazette. If
not satisfied with the argument of the applicant then final rejection will
be given to the applicant.
- Against final rejection applicant can appeal to the Trademark Trial and
- After the publication, 30 days time period will be given to filing the
objection. If there is no objection registration will be granted. If there
is any objection then the proceeding will be continued and registration will
not be given till the final decision.
- It will minimum take 6 months from the initial application to the final
- Natural Person
- Body Incorporate
- Partnership Firm
- Associations of Person
- Government Authority
- Government undertakings
- HUF etc.
Trademark protection does not have a set duration or definite
expiration date. Trademark rights only expire when the owner stops using the
mark in commerce. However, federal trademark registrations expire ten years
after the registration date, unless renewed within one year prior to the
Infringement of trademark in the U.S.A:
Trademark infringement is measured by the so-called "likelihood of confusion"
test. A new trademark will infringe on an existing one if the new one is so
similar to the original that consumers are likely to confuse the two marks and
mistakenly purchase from the wrong company.
The likelihood of confusion test turns on several factors, including:
- Strength of the plaintiff's trademark
- Degree of similarity between the two marks at issue
- Similarity of the goods and services at issue
- Evidence of actual confusion
- Purchaser sophistication
- Quality of the defendant's goods or services
- Whether the defendant's attempt to register the trademark was bona fide
(in good faith).
Note that other factors may also be considered in determining whether a
likelihood of confusion exists. "Even this extensive catalog does not exhaust
the possibilities—the court may have to take still other variables into
Trademark Laws In U.A.E
The United Arab Emirates is one of the countries which are very serious
regarding protecting the brands. To protect the rights of business owners and
their brand name U.A.E issued its first federal Law No. 4 in 1979. In 1992
U.A.E's first federal trademark law emerged which was modified first time in
2000, followed by many such amendments till now.
Law grants trademark rights to U.A.E's nationals and nonnationals who are proving goods and services which are
commercial, industrial, and handicraft oriented. Trademark registered in U.A.E
is protected in all the seven Emirates which are Abu Dhabi, Dubai, Sharjah,
Ajman, Umm Al-Quwain, Fujairah, and Ras Al Khaimah.
According to the Federal Law No.37 of 1992, trademarks refer to those
distinctive elements of a brand such as logos, slogans, hallmarks, packaging,
names, words, signatures, letters, figures, graphics, titles, seals, patterns,
announcements, packs, or symbols that distinguish it from its competitors.
Signatures, titles, characters, seals, posters, engravings, names, paintings,
and any kind of label that serves to distinguish a brand from another, can all
According to Article 3 of Federal Law No. 37 of 1992, geographic names,
banknotes, details of honorary degrees, and marks that could deceive the public
or actually violate public order are not considered trademarkable.
If you want
to file a trademark in the United Arab Emirates, it must not include any of the
Process of registering a trademark in U.A.E:
- Violations of public morals and beliefs
- Symbols in the public eye (such as flags)
- Red Cross and Red Crescent symbols, for example.
- Third-party names and titles
- Other well-known trademarks translated directly.
Who can be a trademark owner in the U.S.A
- Research about the trademark first whether it is already in existence or
a completely new one
- Then file the application for the registration of a trademark, either
online or offline.
- Payment of the fees is the next step.
- Eventually the final evolution will be done by the Ministry of Economy.
If there will be any issue then 30 days will be given to clear that issue.
- After all these steps publication of mark will be done in the two
- If there will be no objection mark will be registered and if there will
be any objection then the mark will not be registered.
- All this will take at least 4- months.
- People of the United Arab Emirates, as well as natural and artificial
persons engaged in any economic, technological, technical, or service sector
- Foreigners, as well as natural and artificial persons engaged in any
economic, technological, technical, or service sector.
- Foreigners, as well as natural and artificial persons engaged in any
economic, technological, technical, or service sector in any other country
on basis of reciprocity.
- Other artificial persons.
once the trademark will be registered it will be valid for 10 years
which can be extended for 10 more years.
Infringement of trademark in U.A.E
Infringement of trademark is considered an offense in U.A.E. it is punishable
with fine and imprisonment or either fine or imprisonment. Fine will be at least
DH 5000. Trademark can be used by the owner only. The following incidents are
said to be a violation of the Trademark (Trademark Infringement):
- Any individual who forges or imitates a legally licensed trademark in
order to deceive the public, as well as someone who uses a fabricated or
imitated trademark in bad faith.
- Anyone who uses a licensed trademark owned by a third party without
permission or puts it on his goods in bad faith.
- Anyone who knowingly sells offers for sale or negotiation or acquires
for sale goods bearing a forged, imitated, or illegally placed trademark, as
well as anyone who knowingly provides or offers to supply services under a
forged, imitated, or illegally placed trademark, is guilty of trademark
Trademark laws are almost similar in U.S.A and U.A.E. They are not
completely the same but the basic structure is almost the same. Both the
country's laws also matched with the Trademark laws of India. In the present
era, this particular law is evolving very fast and the evolution of this law at
present is needed as well. To secure the business and brand names which are
providing goods and services is very needful and trademark helps in providing
security to the same. The process of trademark registration is very easy once
you understand it. Mostly a trademark attorney can help you in getting a
- Reckitt and Coleman Ltd. v/s Borden Inc.
- Erven Warnink v/s Towned
- Honda Motors Co. Ltd. v/s Charaanjit singh and others
- Madrid Agreement.
- Aunt Jemima Mills v/s Rigney and Co.
- Polaroid v. Polarad