Trademark Enforcement Strategies - The Ultimate Path to Protection

Trademarks provide multiple crucial advantages to businesses and customers alike. They validate the source of products or services. Additionally, they help the customers distinguish between brands and understand the quality of the products they buy. Trademarks also carry all the image and reputation a brand builds over the years.

The value of a trademark may be weakened or eventually lost in the scenario where its owner fails to safeguard or monitor the exclusive Trademark Rights in the marketplace. Furthermore, inconsistent or improper use of a trademark can obstruct its owner’s ability to enforce the trademark rights in a given brand. Even if you have the Trademark Registration in place, it is essential to understand that the trademark rights are not self-executing; being the trademark owner, you are ultimately responsible for monitoring the marketplace and your use as well to safeguard well against losing the rights. So, let us now make ourselves familiar with a few Trademark Enforcement strategies that every trademark owner must consider in his journey towards having adequate Trademark Protection in place.

1. Have Proper Symbols of Trademark Registration & Ownership

If you don’t have a Registered Trademark in place but a good faith belief concerning you owning a mark exclusively, you should use the ‘TM’ symbol with your mark. It informs the customers that you consider yourself the mark’s rightful owner. If you have a registered trademark in place, you should use the ‘®’ symbol. In most cases, it is typically sufficient if the trademark symbol appears with one single prominent use of the mark in one single label or advertisement, even though the mark in itself may appear multiple times. It is imperative to keep in mind that the ‘®’ symbol should not be associated or used with unregistered trademarks. Additionally, it must not be used in association with products or services other than the ones defined in the trademark registration certificate. In case you wish to use the trademark with additional types of products or services, you should consider registering the mark concerning such additional types of products or services.

2. Ensure Using Your Trademark as a Trademark  

What needs your due attention is that a trademark should be used as an adjective and not as a verb or noun. Using a trademark as a verb or noun emphasizes that the term is common or generic instead of unique or distinctive. For safeguarding a trademark’s value, it is highly recommended to use the trademark as an adjective before whatever is the generic noun – for instance, Microsoft ® software. Moreover, the use of the term ‘brand’ following the trademark helps significantly in ensuring that the trademark does not become generic, for instance – Scotch ® brand tape. Another crucial aspect in this scenario lies in not using the trademarks in the plural or the possessive – for instance, it is Xerox photocopies, not Xeroxes.

Referring to your trademark as a verb or noun enhances its likelihood of becoming generic and eventually losing its trademark protection someday. It has already knocked out some widely recognized brands in the past, including Cellophane, Asprin, and Escalator. All these brands were once way too valuable and have now become only the generic descriptors of the concerned products or services.

3. Monitor Infringing Uses of Your Trademark

To safeguard your trademarks adequately, you should track new trademark filings, online use, social media usage of marks, and domain names, which shall alert you to potential conflicts. You can efficiently use AI and algorithms to scan the web regularly for coming across instances of infringement. The same includes e-commerce marketplaces, standalone business websites, and social media channels. Additionally, with image recognition technology, you can conveniently spot your brand’s trademark design within online graphics and pictures.

4. Send Cease-&-Desist Letters Automatically

What serves as the bread and butter of trademark enforcement is sending cease-and-desist letters. With automated trademark monitoring, you can send these letters when some specific conditions are met or when you send the green signal to enforce many infringers at once.

5. Secure Social Media Handles & Domain Names Incorporating Your Trademark

Social media handles and domain names are usually available to the general public on a first-come, first-served basis. Therefore, brands and business owners should register their domain names and own the respective social media handles as soon as they register their trademarks. If in case you find out that your selected mark already exists as a registered domain name or social media handle, there are several alternatives or mechanisms that you can use to challenge the infringing use or obtain a transfer of rights; however, it is a lot easier to obtain the rights well in advance instead of having to chase them after someone registers your mark as a domain name or owns the same as a social media handle. Trademark owners should get in touch with Trademark Attorneys to explore the best possible strategies for acquiring and challenging third-party registration of social media handles and domain names incorporating their valued trademarks.

Bottom Line

In the ongoing highly competitive business environment, a brand name means everything. Once you have a registered trademark in place, you must put in a genuine effort to safeguard it at all times. With an all-inclusive trademark monitoring solution, trademark enforcement can prove to be much easier and quicker.

The experts at Kashishipr can help you enforce your trademark rights and keep your business secure. Get in touch with us at kashishipr@kashishipr.com to discuss your trademark enforcement requirements!  👉 ✅  For view-source: https://www.kashishipr.com/

Registration of Motion Mark as Trademark in India

With the increase in globalization and cross-border trade, intriguing types of trademarks are trending and have become a crucial tool to signify a company’s identity. Business companies across the globe understand the utmost importance of the internet and different social media platforms and are therefore enhancing their logo with unique visual effects and animation.

The reason why there has been a sharp increase in moving logos being incorporated as trademarks by many companies is that the contemporary market is now innovating new products with sensory and unique experiences to leave a mark on their customers and develop a distinct and novel reputation.

Motion Trademarks in India

A motion trademark refers to a moving logo used by a company as a creative and innovative marketing approach to attract customers to their business offerings. A proposed motion trademark can be made with the help of animations, different computer programs, or any moving object existing around the company.

While applying for the Trademark Registration of a motion mark in India, it is essential to ensure that the mark is capable of being depicted on paper. Filing a Trademark Application for a motion mark involves the same requirements of evaluation as other forms of trademarks; however, motion marks account for a very small fraction of trademark applications submitted in India. During the filing of the trademark application for a motion mark, the applicant should ensure that the movements occurring in the mark should be represented in sequence as presented for the product or brand in question.

The most critical aspect that may be subject to the Trademark Protection of a motion mark is the succession of images in the said mark.

The Indian Trademark Law and Motion Marks

Previously, the trademark applications filed for motion marks in India couldn’t meet the requirement of graphical representation, which made it difficult for the applicants to register their motion marks as trademarks.

The prime reason behind the rejection of the registration of motion trademarks lies in the said mark’s inability to represent itself graphically. Furthermore, even if the proposed motion trademark is rendered before the trademark registrar graphically, the graphical representation must be crystal clear, self-contained, precise, intelligible, easily accessible, objective, and durable.

Under Section 2(1)(zb) of the Indian Trade Marks Act of 1999 (referred to as ‘Act’ further in this article), a trademark is defined as “a mark, which is capable of being presented graphically and is capable of distinguishing goods or services of one person from those of others and may include the shape of products, their packaging, and combination of colors.”

Therefore, we can say that the definition of a trademark in this Act is all-inclusive and includes anything and everything capable of distinguishing the product in question and being represented graphically.

It is imperative to note that during the examination stage, a motion mark can never be presented in its pure form. It is required to be presented before the trademark registrar as a combination of all the aspects that it comprises; for instance, in the case of Nokia, both sound and movement were presented together in its logo.

The Act, along with other rules, regulations, and laws, expanded its purview to accommodate protection to various types of non-conventional trademarks, which now makes it pretty convenient for the applicants to register marks based on smell, touch, motion, shape, and so on.

For the registration of non-conventional trademarks, a draft manual has been put in place, which specifies that the Act is to be interpreted broadly. It elaborates on the registration, protection, and enforcement of non-conventional trademarks keeping in mind the interests of the applicants.

Currently, the Indian trademark regime is experiencing a considerable transformation wherein trademark applications for non-conventional marks are being filed to a great extent frequently. It is undoubtedly seeing a positive change towards incorporating global standards for brand recognition and protection; however, for the nation to truly situate a secure space for brands, it must adopt all equitable international provisions and formulate a law specifically dealing with the domain of motion trademarks.

Final Thoughts

A static trademark only safeguards a single image, whereas a motion trademark protects several images included in the motion. Therefore, as mentioned above, it would be wise to say that motion marks broaden the ambit of trademark protection and increase the brand value associated with the trademark.

Without any second thought, the acceptance of motion marks as trademarks is opening up new doors for brands and businesses. Although business companies and brands have been interacting with their already existing and potential customers using animations for pretty long now, animations can now be protected under the Act in India in the form of a motion trademark. With technological advancement in this arena in the coming years, motion marks as trademarks shall be registered more and gain more importance. 👉 ✅ For view-source:  https://www.kashishipr.com/

Trade Secrets in Intellectual Property Rights (IPRs)

 

In today’s highly competitive working environment, almost every other individual knows what Intellectual Property (IP) is and that the protection of IP assets is a matter of paramount importance. Patents, copyright, and trademarks have been the most widely recognized forms of IP to date; however, there are other forms as well, including geographical indications and industrial designs, which have been gaining attention in the past few decades. A still-new form of IP that has gained recognition in the past two decades is trade secrets, which we shall be discussing here in this blog.

In simple terms, trade secrets are Intellectual Property Rights (IPRs) granted on confidential or sensitive info, which may be licensed or sold.

The North American Free Trade Agreement defines a trade secret as “Information having commercial value, which is not in the public domain, and for which reasonable steps have been taken to maintain its secrecy.”

The Uniform Trade Secrets Act (UTSA), 1970 also provides the definition of trade secrets, which is:

“Information, including a formula, pattern, compilation, program device, method, technique, or process that:

• Derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by other persons who can obtain economic value from its disclosure or use; and
• Is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.”

After going through all the definitions mentioned above, we can say a trade secret refers to any piece of info or data relating to a brand or business that is generally not known to the public at large and for which its owner puts in a sincere effort to maintain its confidentiality. A trade secret gives a competitive edge to brands and businesses over their rivals in the industry. Kindly note that:

Almost every type of info, process, or data can be referred to as a trade secret only if it is intended to be kept secret and involves the economic interest of the owner.

Eligibility Criteria for Trade Secret Protection

For any info to qualify as a trade secret, it must, in general, be:

• Commercially valuable as it is a secret;
• Known only to a limited set of people; and
• Subject to adequate measures and steps that are to be taken by the owner of the information to keep it a secret, which includes the use of confidentiality and non-disclosure agreements for business employees and partners.

*Any unauthorized disclosure, use, or acquisition of a trade secret in a way contrary to honest commercial practices by others is deemed as an exceedingly unfair practice and an infringement of Trade Secret Protection.

Information Protected by a Trade Secret 

Generally, any confidential piece of business info that provides a competitive edge to a company or firm and isn’t known to others may be safeguarded as a trade secret.

Trade secrets comprise both technical info, including designs and drawings of computer programs, pharmaceutical test data, information concerning manufacturing processes, etc., and commercial info, including the list of clients and suppliers, distribution methods, marketing strategies, etc.

Additionally, a trade secret may consist of a combination of elements, every element of which by itself lies in the public domain, but where the entire combination kept as secret provides a competitive edge in the industry.

Other pieces of info that may obtain trade secret protection include formulas, recipes, financial info, and source codes.

Protection Offered by a Trade Secret

As per the legal system prevalent in different nations, the legal protection offered by a brand or business secret forms a crucial part of the general protection offered against unfair competition or is based on the specific laws and provisions concerning the protection of confidential information.

Although the final decision of whether or not a trade secret is infringed upon varies from one case to another, unfair practices concerning confidential info usually include breach of contract, industrial or commercial espionage, and breach of confidence.

It is essential to note that the owner of a trade secret can’t stop others from using the same commercial or technical info in the scenario where they acquire or develop the said info independently through R&D, marketing analysis, reverse engineering, etc. Furthermore, since trade secrets aren’t disclosed publicly, they do not provide ‘defensive protection’ for being prior art, which exists in the case of patents. For instance, let us assume that there is a particular method for producing a product ‘A’ that has been protected by a trade secret. Now, some other person can obtain patent or utility model protection on the same invention only if he arrived at that invention independently.

Preventative Measures for Safeguarding a Trade Secret

Business companies and firms should take the following preventive measures for safeguarding their trade secrets against misappropriation or theft:

• The employees and business partners of a firm should sign a Non-Disclosure Agreement (NDA) to prevent the disclosure of any piece of confidential information.
• The employers of a firm should sign a Non-Compete Agreement (NCA) with the consultants, contractors, and employees to prevent them from entering into competition upon the termination of their employment or service agreement.
• There should be robust infrastructure in place for IT security.
• A person in every company should be in charge of controlling the accessibility of critical documents. 👉 ✅ For view-source:  https://www.kashishipr.com/

Protection of Intellectual Property (IP) in the Metaverse

With the Metaverse and Non-Fungible Tokens (NFTs) being the common buzzwords as of late, the USPTO (US Patent & Trademark Office) has been experiencing a significant rise in the number of Trademark Applications filed in the virtual sphere to safeguard the products and services.

The dramatic rise in e-commerce in the last two decades saw many brand and business owners struggling to safeguard their Intellectual Property (IP) assets in cyberspace, starting from domain names and then going onto social media handles. At present, with the immense growth of interconnectivity, along with digital experiences creating augmented reality and virtual reality, many digital marketers and technology experts have given the term ‘Metaverse’ to these new spheres of human interaction. To put it straightforwardly, the Metaverse refers to an immersive digital space in which users interact with different people and things by using digital avatars. This new sphere or market provides offers and is very much likely to expand upon the new ways for multiple industries and sectors to increase scalability, including new business opportunities and ways of promoting products and services at an even faster pace. NFTs may refer to the digital goods or specific pieces sold in the Metaverse. However, NFTs, in general, refer to the data stored on a blockchain for authenticating and keeping track of the digital property. These are non-fungible, implying that they are unique and can never be replaced by something. Therefore, an NFT can refer to a digital art piece or can be linked to a physical product for proving the authenticity or ownership of the said product.

These latest developments in the digital economy have an important feature of interoperability, which means that consumers can conveniently move virtual items like cars or clothes from one platform to some other. When we talk about the real world, a consumer can buy a sports team jersey online or at some mall and then wear it at home, to a restaurant, or at some sports event. On the contrary, in the virtual landscape, an outfit could be purchased and worn by an avatar on more than one platform. Furthermore, the purchase of virtual products and services could be used in multiple virtual worlds.

Considering such new scenarios, brand and business owners must craft robust IP strategies for leveraging business models and innovations. In the Metaverse, protectable IP assets vary from copyright to trademark, including slogans, logos, brand names, and trade dress in the form of design and packaging, and even Patent Protection for inventions. In this scenario, business companies should conduct an in-depth analysis of the virtual landscape where they have plans to market and promote their products and services to figure out whether or not they even want to do business in the Metaverse.

IP Challenges in the Metaverse

With globalization and collateral global market developments in almost every other field, like the development of banking systems and payments, there will always be challenges to the well-established legal precedents. Due to the new virtual landscapes, changes in IP laws are inevitable. In this aspect, many legal questions must be resolved, including:

• Could a trademark be widely recognized in the Metaverse and not in the physical reality?
• What will the future trademark licensing deals in the Metaverse look like?
• How will trademark franchising deals and other business collaboration models be executed in the Metaverse?
• What will be the approach for the protection of trademark, copyright, and patent when the virtual worlds are combined with the physical world’s visual appearances?

Taking a Step Ahead: Points of Consideration

Business companies and firms should undoubtedly register and safeguard their IP assets in the sphere of the interconnected virtual reality for the legal and commercial reasons given below:

1. Brand Protection, Management & Enforcement

Depending on their business models and future product strategies, business companies and firms should adopt a proactive approach and accordingly update their overall IP Protection strategy or Trademark Protection strategy, in particular for the brand name. As more brands and businesses are opting to operate in the Metaverse, brand monitoring expenditures for spotting fraudulent or invalid use of trademarks are very much likely to keep rising. It is pretty early at this moment to figure out how brand protection, management, and enforcement shall evolve in the Metaverse.  However, inevitably, e-commerce in the Metaverse or virtual sphere will involve the fraudulent or invalid use of trademarks by third parties in a deceivingly similar or identical way. If a company or a firm is already operating in the Metaverse or is looking forward to doing the same, it should anticipate the given potential risks by registering its trademarks for use in the virtual world.  By doing so, business companies and firms shall have a better picture in their minds and enforce their Trademark Rights well in case the prospect of litigation arises.

2. A Comprehensive Approach to IPRs

Associated with brand enforcement, the beginning of the Metaverse emphasizes the importance of paying due attention to Intellectual Property Rights (IPRs) comprehensively.  Without any second thoughts, the primary offerings in the Metaverse, along with the business models, highlight the interconnectivity of IPRs more than ever before. As its primary core asset, a virtual business may have a virtual product design, the different aspects of which may require protection under different IP laws, including trademark, copyright, and industrial design. For obtaining beyond doubt ownership of such a virtual product design, specifically in the legal environment, IP protection must be carefully considered and dealt with diligently.

3. Market Reach & Presence

When we consider the aspect of marketing and the sales strategy, as soon as a company decides to operate in the Metaverse and proceeds to safeguard its assets in the virtual sphere, it will understand that such marketing holds immense potential for reaching out to new worldwide consumers at an unprecedented pace. Due to such new platforms, business companies and firms shall have a new tool for making their brand globally recognizable and well-established. Brand awareness tools monitoring and safeguarding the trademark rights across the globe will be essential in this scenario. ✅ For more visit: https://www.kashishipr.com/

Sound Trademarks and their Registration in India

Sound trademarks are widely recognized in developed nations like the United States, and their knowledge is now rapidly growing in developing nations like India. In India, a sound that can be graphically represented by a succession of musical notes with or without words can obtain Trademark Protection. Under the Indian Trade Marks Act of 1999, if a sound is or has become a distinctive or unique symbol associated with one undertaking, it will be eligible for obtaining Trademark Registration. In simple terms, for a sound mark to be registered as a trademark, an average customer must be able to perceive the sound as being associated with a specific service or product. This article shall discuss the foundations of sound trademark registrations in India while giving examples of widely known sounds trademarks.

Understanding Sound Trademarks with Examples

A sound trademark is one in which sounds perform the trademark function of uniquely identifying the commercial origin of products and services. Over the past few years, a sound mark has become widely recognized as a trademark in different industries and markets. A sound can undoubtedly help identify the origin or source of a product or service.

In 2008, India received its first-ever sound trademark registration from the American web services provider, Yahoo Inc. The sound trademark consisted of a human voice yodeling Yahoo. ICICI Bank, the leading private sector bank and financial services provider in India, was the first-ever Indian company to register a sound mark as a trademark. At a later stage, India adopted the provisions of the EUIPO (European Union Intellectual Property Office) and came up with the Trademark Rules of 2017. Section 26 of the Trademark Rules, 2017 stipulates how a sound mark should be registered as a trademark. Although sounds were never prohibited by law from obtaining trademark protection before the introduction of the Trademark Rules, 2017, there was no prescribed formula in which a sound mark could be registered.

Furthermore, the sound should not be more than 30 seconds in duration and should consist of a graphical depiction of the sound notations. Before sound marking, the applicants had to register sound marks as trademarks by using graphical representation or typing out the melody.

Some of the other registered sound trademarks in India include:

• National Stock Exchange (Theme song)
• Britannia Industries (Four note bell sound)
• Nokia (Guitar notes while turning on the device)
• Netflix (Ta-dum sound)
• Edgar Rice Burroughs (The tarzan yell by its toy action figure)

Advantages of Registering a Sound Trademark 

The prime advantage of registering a sound trademark is exclusivity. It implies that you, as the trademark owner, shall be the only one in the nation to launch or sell products or services under the said trademark or brand name. Additionally, the brand is what a customer links with the company. It is also how the public at large perceives the situation. If you have a strong sound trademark, you own the exclusive right to sue any individual or third party infringing upon your Trademark Rights. You can initiate legal proceedings in court if a third party or individual uses your sound trademark without obtaining your permission.

Establishing a company’s trademark or brand name at a pretty early stage is crucial for its future growth and success. Without any second thoughts, a strong legal foundation on which you may raise the standing of your company in the industry puts forward a brilliant and exceptional brand name that is assured by trademark registration. Such advantages shall help you and your company in creating a strong impression in the present highly competitive global business environment.

Vital Points of Consideration before Registering a Sound Trademark

It is imperative to have the final version of your sound mark in place before going ahead with trademark registration. The same shall have a positive impact on your already existing and potential customers and reflect the image that you are looking forward to projecting. After confirming the initial prototypes of your sound mark, the next step involves testing the audio recordings with focus groups. You can conduct an audio touchpoint analysis to determine the points where your audio recording shall come into contact with your customers. Moreover, you need to consider whether the sound should be consistent across all touchpoints or custom-tailored to fulfill the diverse needs.

Sound Trademark Registration Procedure in India

There is no definition of a sound trademark in the Indian Trade Marks Act of 1999. It only states that a mark must be represented visually to obtain trademark protection. Consequently, a sound that is graphically represented by a succession of musical notes with or without words may be safeguarded under the Act.

The Trademark Rules of 2017 does, however, acknowledge sound as a trademark category (non-conventional trademarks), as already mentioned above. As a result of the Rules’ recognition of sound trademarks, brands and businesses now have more exclusivity for their promotional and marketing tactics to entice, attract, and appeal the customers in the ongoing competitive world.

For registering a sound trademark in India, there are three requirements, as already mentioned above, including:

• The Trademark Application must specify that the mark to be registered as a trademark is a sound mark;
• The sound mark must be submitted in an MP3 format in no longer than 30 seconds in length; and
• The application must include a graphical depiction of the sound mark in the form of musical notations.

What goes without saying in this scenario as well is that even for sound trademarks, the minimum standards of trademark registration need to be fulfilled. To be specific, the sound in question must be distinct. Remember, generic sounds don’t meet the eligibility criteria of trademark registration.

Trademark applications for a sound mark are processed in the same way with the Indian Trade Marks Registry as the other trademark applications submitted. Apart from all the general details required, including the applicant’s name, address, contact info, the legal status of the applicant’s entity (if any), class of the goods or services, specification of the goods or services, and so on, the date of the sound mark’s first use is to be mentioned. Kindly note that if you can submit any documentation evidence to show the use of the sound mark at the time of filing the trademark application, the situation will be in your favor since then the distinctive element of the sound mark can reasonably be proven through acquired distinctiveness, i.e., by way of the use of the sound mark.

It is essential to note that sound trademark registrations have a specific nature, due to which the trademark applications for sounds are investigated more closely (compared to other marks) during the further steps in the trademark registration process. However, if the said trademark application complies well with all the legal requirements and conditions, it will be duly considered, eventually leading to the trademark registration of the sound mark. The steps for publication, opposition, and registration are the same as they are for any other trademark application. ✅ For more visit: https://www.kashishipr.com/

Similar & Identical Trademarks in India - How to Identify Them Well?

 

It is imperative to have Registered Trademarks in place to have one’s business stand out in the market and create a significant brand value. However, developing a unique and eye-catching mark is not an easy task.

In India, trademarks are registered, protected, and enforced under the Trademarks Act of 1999 (referred to as the ‘Act’ further in this article). The Act safeguards all registered trademarks from misuse or infringement in India. Considering this aspect, an individual or a company needs to follow all the rules and regulations laid in the Act while creating a trademark to differentiate their products or services from those of their competitors. The biggest challenge one has to overcome while going ahead with Trademark Registration is to ensure that their proposed trademark is not identical or similar to an already existing trademark. Section 11 of the Act particularly deals with these types of circumstances only by not permitting the registration of identical or similar trademarks.

Similar Trademarks – Similar trademarks are the ones that are easily mistaken with some already existing trademarks. The term ‘similar’ here can be understood or referred to as ‘deceptively identical.’ It implies that the mark in question resembles another existing trademark to such an extent that it is likely to deceive or confuse an average customer. For this, the examiner of a Trademark Application shall consider the aspect of probability, i.e., the possibility or likelihood of confusion or misidentification of the mark taking place.

Identical Trademarks – Identical trademarks are the ones that are a reproduction of some already existing registered trademarks. For a mark to be considered an identical trademark, it doesn’t need to be an exact copy of an already existing mark. If all the elements of the mark are similar, or when viewed as a whole, the mark consists of differences unnoticeable by an average person, it will be considered identical.

Identifying Similar & Identical Trademarks

When you apply for trademark registration, your Trademark Application shall go through various stages of inspection. The trademark officer or examiner shall thoroughly inspect your proposed trademark during the entire procedure of trademark registration. While inspecting the proposed trademark, the examiner shall take into account the following aspects for coming across similar and identical trademarks:

• Visual Similarity – Two trademarks having elements that appear similar in some way;
• Phonetic Similarity – Two trademarks sharing the phonetic similarity in sound;
• Structural Similarity – Two trademarks sharing the same underlying concept or idea that they imply or project; and
• The similarity of the respective products or services covered.

While observing these aspects, the examiner shall also:

• Inspect the proposed trademark as a whole (the trademark isn’t dissected and then compared – it is taken as a whole and then compared with the other mark); and
• Consider the average intelligence and take into account the ability of the public at large.

If he believes that there is a likelihood of confusion between the two marks in question as one another among people, he will reject the trademark application based on the relative grounds specified in Section 11 of the Act.

Understanding Honest Concurrent Use of Trademark under the Act

The only means using which an identical or similar trademark can be registered is through the defense of honest concurrent use, which is provided under Section 12 of the Act. In this scenario, the law hands the power of decision-making to the Registrar. Therefore, we can conveniently say that the allowance of honest concurrent use of a trademark lies in the judgment of the Registrar.

In India, the laws, rules, and regulations for honest concurrent use of a trademark were first laid down in 1958 in Kores (India) Ltd. v. M/s Eshwarsa and Sons. In this case, five factors were laid down concerning the defense of honest concurrent use of a trademark. The five factors that need to be considered are as follows:

• The extent of use of the mark concerning area, duration, and quantity;
• The honesty of concurrent use of the mark;
• The degree or extent of confusion likely to be caused, which is indicative of the inconvenience caused, if any, to the public;
• Whether or not there exists any piece of evidence concerning the aspect of confusion mentioned in the previous point; and
• The amount of relative inconvenience caused to either of the parties involved if the concurrent use of the mark gets approved.

While Section 12 of the Act does offer permission for concurrent use of a trademark, most lawsuits have been in the negative. Almost all the lawsuits are decided against concurrent use as trademark use is generally never proved honest. However, in Goenka Institute of Education and Research v. Anjali Kumar Goenka and Anr., the court permitted the defense of honest concurrent use of the trademark due to the points mentioned below:

• The parties involved started using the term ‘Goenka’ nearly around the same time.
• One party was New Delhi based, and the other was Rajasthan based; therefore, no party could have known the other party’s use of the term ‘Goenka.’
• The term ‘Goenka’ formed a part of the appellants’ trust names.

After observing and studying all the previously-mentioned points of the case, the court concluded that the use of the term ‘Goenka’ was honest and concurrent and therefore permitted its continued usage to both parties. ✅ For more visit: https://www.kashishipr.com/

Trademark Issues: How is Social Media Becoming the New Target for Cybersquatting?

A trademark refers to a legally registered word or symbol representing a specific product or service of a company. It helps the public at large to identify the products and services of one and distinguish them from those of others. Therefore, we can say that a trademark serves as a helping hand in gaining more uniqueness and popularity everywhere, including on platforms as prevalent as the internet.

When it comes to the term ‘cybersquatting,’ it refers to the phenomenon in which fraudulent entities use the internet domains of widely recognized brands and companies to extract benefits from their reputation and goodwill. Such fraudulent entities often utilize the names or other identifying markers without obtaining permission from the entity to which the name or the identifying marker belongs. At a later stage, these fraudulent entities attempt to sell the internet domains in question with the Registered Trademarks to the brands or companies to which the names belong, with the intent of making colossal profits.

The term cybersquatting is derived from the term ‘squatting,’ which refers to the act of occupying an unoccupied section or space not belonging to the squatter. Generally, it is described as using widely-known trademarks as internet domain names for earning profits by reselling them. It is essential to note that the registrant of the internet domain name doesn’t possess any rights over the trademark. To be specific, the act of cybersquatting is nothing but infringing upon the exclusive Trademark Rights of the owner.

In this blog, we will understand how social media is becoming the new territory for cybersquatting and shed light on the steps to reduce the issue on different social media platforms.

How Cybersquatters Tarnish a Brand on Social Media

The term ‘Social Media’ came into being as a mechanism or way for people around the world to interact, communicate, and stay in touch with their friends, family members, acquaintances, and new individuals using many innovative technologies on the internet. With the emergence of various social media platforms, like Facebook, Twitter, Instagram, LinkedIn, and so on, a new type of cybersquatting has been on the rise, which revolves around registering the trademarked names or brands belonging to notable entities or individuals on prime social media networks.

Due to the increasing popularity of social media platforms, many organizations and business companies now own profiles and accounts on such platforms to earn more loyal customers. Many such platforms also offer verification tags to well-known individuals and entities to enable them to build strong goodwill and a reputation for their brand and trademarks.

While Tony La Russa (the former manager of the St. Louis Cardinals and Oakland Athletics) dismissed his lawsuit against Twitter voluntarily, his dispute showcased the hazards associated with the username feature on social media platforms. Tony La Russa had filed a complaint against Twitter alleging cybersquatting. The dispute involved a Twitter account with Tony La Russa’s name, picture, and description saying, “Hey there! Tony La Russa is now using Twitter.” This account on Twitter encouraged the other Twitter users to follow it and receive updates about Tony La Russa. Tony La Russa believed that the updates shared were defamatory and nasty. He even contended the account’s creator for creating it with bad faith and making profits from Tony La Russa’s trademark. However, Tony La Russa ended up filing a dismissal voluntarily after the parties involved solved the dispute.

The offensive usage of tags and the reservation of usernames on social media platforms are exceedingly harmful to the trademark holders. When we talk about Facebook in this scenario, the American multinational technology conglomerate accepts that username infringement can be a serious issue, specifically in cases when someone else tries building a reputation with a trademark on which its rightful owner has spent significant time, money, resources, and effort building. Cybersquatting through infringement of usernames prohibits the trademark owners from using such known usernames and obstructs their ability to use their trademarks on those specific social media channels.

It is imperative to keep in mind that reservation of usernames with bad intent can defame and tarnish the trademark’s reputation as well, eventually leading to trademark owners losing control over the reputation of their respective trademarks. Let us discuss Clean Flicks, Inc. v. Daniel Dean Thompson to understand this aspect better. In this lawsuit, cybersquatting committed by the defendant spoilt the Clean Flicks trademark. To put it straightforwardly, the defendant registered Clean Flicks Media as his username on Myspace, a social networking service based out of the United States. The defendant tried making others believe that he was one of the founders of Clean Flicks Media. Finally, he was arrested for possession of child pornographic contents, statutory rape, and many other incidents and crimes reflecting an image opposite to the family-friendly image portrayed by Clean Flicks. Due to the arrest of the defendant, news stories associated Clean Flicks Media with him as Myspace and Clean Flicks had to enforce legal action to safeguard their prestige. Therefore, it would be wise to mention that reserving usernames through cheating leaves trademark owners with no control over the reputation of their marks, which, in turn, could end up harming their image and trademarks.

Measures & Steps Taken by Social Media Platforms to Reduce Cybersquatting

1. Facebook

If registered trademarks are infringed upon on Facebook, the platform reserves the exclusive right to reclaim usernames. Trademark holders and proprietors are accountable for reporting Trademark Infringement instances using Facebook’s online ‘username infringement form’ or ‘trademark report form.’ Moreover, usernames on Facebook need ‘mobile number authentication,’ which implies that obtaining a username requires a user to validate his account using his mobile device.

2. Instagram

The free, online photo and video-sharing social networking service – Instagram – is the new trending platform among millennials. Since the number of Instagram users is increasing exceptionally, there have to be adequate measures to avoid cybersquatting. Instagram follows the concept of ‘verified accounts’ to control identity confusion. On Instagram, verified accounts are marked with a blue tick, which indicates that the profile is confirmed by the platform to be the authorized profile for the brand or individual representing it.

3. Twitter

Twitter’s ‘name squatting regulation’ prohibits cybersquatting, thereby eliminating the occurrence and creation of ‘username for sale’ profiles or accounts on the platform. Twitter ensures that selling, extorting money, or other forms of payment in return for usernames leads to the account suspension of the party or individual involved in the same. Furthermore, the platform has an ‘impersonation policy’ prohibiting non-parody impersonation.

An account on Twitter is said to be guilty of impersonation if it provides incorrect details or creates confusion in the minds of others. Accounts with such a motive may be permanently suspended on Twitter. The platform’s standard to define parody is whether or not an average person would be knowledgeable to realize the fake profile is a joke. Lastly, following Tony La Russa’s lawsuit, Twitter introduced the concept of ‘verified accounts’ to prohibit identity confusion. The ‘verified account’ insignia on a Twitter profile indicates it is a legitimate and genuine account.

Final Thoughts

Cybersquatting undoubtedly has a cascading impact on the social and economic interests of the society, due to which it should be prosecuted to provide a deterrent effect. The governments of different nations believe that cybersquatting is a serious issue and have implemented several initiatives to combat it. For instance, the United States has the Anticybersquatting Consumer Protection Act (ACPA) of 1999, which curbs ‘cybersquatters’ who register Internet domain names similar to registered trademarks with an intent to sell them to the trademark owners or some third party at a very high price. The Uniform Domain Name Resolution (UDRP) is a method introduced by the Internet Corporation for Assigned Names and Numbers (ICANN). It settles conflicts relating to registrations of trademarks and domain names. In nations like India, where there are no domain name safeguarding laws as of now, the .INDRP, i.e., .In Domain Name Dispute Resolution Policy is a process that helps settle such disputes. ✅ For more visit: https://www.kashishipr.com/