What is Trademark?
A trademark is a source identifier in the form of any indicia (sign, design or expression) that is capable of distinguishing a product/service of a certain company or person from the products of others. It can be in the form of word marks, stylised marks, logos, labels, product packaging / trade dress, slogans/catch lines (conventional forms) and also as sound mark or colour mark (non-conventional forms).
Few examples picked up from photography industry in India:
If the above explanation stills sounds difficult to digest, let us make it very simple for you by presenting a story. Have you watched the movie, PK starring Amir Khan? Even if you haven’t, you may find the explanation funny and extremely easy to understand. You can see this story on our another post of flIPstaan here.
Whether a logo is a trademark or copyright subject?
What you see above are basically logos. A logo usually protected by trade mark law, may also be protected under copyright law as an artistic work.
What is the difference between the symbol ‘TM’ and ‘R’?
The TM symbol is a statement that the mark is being used as a trade mark and rights are asserted. ® is a statement that the mark is a registered trade mark in the country where is is being used. However, please note wrongful usage of the same is a punishable offence.
What factors you should consider, when deciding the name of your company/website/social media, to get trademark registration easily?
First of all, try not to use the regular industry words or generic names such as ‘Photography’, ‘Photo Studio’, ‘Colorlab’ or ‘Photoart’. These are descriptive trademarks which has minimum protection under trademark law.
Instead, we encourage you to try using the following types of marks:
Invented or Coined Words: Basically, a combination of two words, such as ‘Creanograph’ which is a play of words ‘creativity’ and ‘photograph’. The best trade marks are invented/coined such as Kodak (as there is no pre-meaning of the same) and Nikon (derived from Greek word nike meaning “victory”).
Arbitrary Marks: Arbitrary mark, such as Red Chillies (have a meaning but have nothing to do with the service), Ombre (has nothing to do with wedding photography). Similarly, the word ‘Canon’ literally means a general law, rule, or principle, by which something is judged. However, the camera manufacturer Canon has nothing to do with law, rule or principle.
Suggestive Marks: Third is suggestive marks, such as ‘Creative Genes’ which hints at creativity but not to photography directly.
Name of Photographer: Another strong mark is the name of the photographer itself, such as ‘Daboo Ratnani’.
Is trademark registration mandatory to protect your brand?
No. However, trade mark registration is highly recommended because it has certain distinct advantages, such as:
- Registering your trademark makes your legal claim stronger vis-a-vis others’ and provides a clear proof of the time frame when you started using the mark.
- If you have countrywide expansion plans in mind, registering your trademark gives you nationwide priority to the mark.
- You can use ® instead of TM, indicating to the public you have a registered trademark.
If you have just started your photography business, you can start using may find it is easier to begin protecting your mark simply by including TM after your brand in your advertising, on your promotional materials, and on your web site. This gives you common law rights to your trademark in the territory you are using it.
Does registering a trademark before others, always protect your brand?
In most of the cases.
Who is a ‘prior user’ of trademark?
Someone who starts using the trade mark before any other person’s registration or use.
What should you do if someone is using a similar name or mark for their photography services?
A. Legal Notice.
B. A fails, file a suit. Obtain an interim Injunction.
B Fails. Contest in trial. Seek a permanent injunction, damages, renditions of accounts and cost.
How do you find out, whether a particular mark is already registered as trademark?
You can simply go to the link here, which is Indian government’s official website for public search of trademark. The link opens with the following window:
Once here, you have three options for wordmark search, viz. ‘Start With‘, ‘Contains‘, ‘Match With‘. You can choose any of these depending on your requirement. However, we suggest you to use the option, ‘Contains’ for a more full poof searchability.
The next step is to insert the Class. Let me help you here with which classes are important from photography perspective. You can search for Class 1, 9, 16, 40 (photo retouching, developing, processing, restoration, printing, etc.) and 41 by entering one class number at a time in this second field. This will suffice for all practical purposes. However, if you still want to search deeper, you may also look for Class 20 (photo frames), 12 (photography drones), 37 (photography equipment repair). You need not enter anything for the third field, i.e., ‘Goods Description‘ at present.
To explain this further, let me give you one example. I entered, the words, “Dabboo Ratnani” in the first field and started searching with class numbers (1, 16). When I entered the class number as 16, I got my result, as shown in the screenshot below.
What is important here is to see: (a) the status of the mark, which is “Registered”; (b) who is the proprietor (i.e., owner of the mark), which is “Sundeep Ratnani”; and (c) the time frame or validity, which is 31 March 2000 (being used since) to 19 August, 2023.
Until you see the status as ‘registered’, you may assume that the trademark registration is not 100% complete as yet. Let me give you another example, where the status of trademark is still not showing ‘Registered’ as of today (3 August, 2020) and the application has still some formalities left, however, small.
How long my trademark will survive as per Trade Marks Act, 1999 of India?
Trademark survives for 10 years from the date of filing of the application in India (not the date when the certificate of registration is issued.)
Can I renew my trademark after the expiry of first 10 years of its term?
Yes, you can renew your trademark from time to time for an unlimited period by paying the necessary renewal fees. Each renewal term is for a period of 10 years. However, if you fail to renew your mark, it will be removed from the Register of trademarks by Trademark Registration office of India.
How is copyright different from trademark?
Copyright exists only in original works. A trade mark may exist in original or derived work. Original means originating from the creator and not copied from someone else. An original photo is a subject matter of Copyright. However, Apple (Originally, the fruit) is a subject matter of trade mark for Computers. A photograph can be both Copyright and Trademark. Trade Mark in photos arises only when they are applied or sought to be applied on a product. For example, Shahnaz’s Hussain phptos on her products or Old Man’s photo on MDH products.
Authors: Vivek Verma & Ankit Rastogi