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An estimated 6-minute read

Tagline Registration- Its Significance and Procedure

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When we come across with the words like ‘Think different’ or ‘Think outside the box’ what pops up quickly in our mind is the product of Apple Computers the best in terms of technology , or let’s say ‘Because I’m worth it’ ladies would with no instance say that’s  L’Oreal.

This is nothing but an effect of distinguished and famous taglines. A tagline is a succinct phrase; it helps to distinguish one producer from another, and is a platform for building goodwill of product in market. Taglines are the easiest and most effective way to communicate to a consumer and also imminent in depicting relationship between trader and goods. It can enhance the value and relevance of your brand, extend its reach, and give it renewed vigor.

To fix your brand’s identity in the minds of consumer, it is very significant that your Tagline should be consistent with your product. TAGLINE can’t be registered separately as it is covered under Trademarks.

Tagline comes under trademarks and its registration is regulated under the Trademarks act 1999 and Trade rules 2002, though not compulsory to register, it is very important rather prudential to register your trademark as it helps enterprise to use, share and assign it. Registration is beneficial to consumers and also guarantees identity of the producer and helps in verifying authenticity e.g. ‘Just do it’ with no further question one would go for it because this tagline reminds us with best sport product – Nike. Before registering slogan, mark or tagline under the stem of trademark it is advisable to conduct search and insure whether your trademark doesn’t match with any other mark.  

Trademark which exist earlier and is mere imitation or reproduction of well-known mark should be refused[1]. A person shall be deemed to have infringed a registered trademark if his trademark is identical to some other registered trademark.

Procedure for application

Any producer who wants to register his tagline i.e trademark can apply in writing to Registrar in manner prescribed under the act[2]. One can register for several classes of goods or services by means of single application; however the fee payable is to be calculated on the basis of the number of classes in which registration is sought[3]. Registrar is under obligation to register the trademark where the procedure for registration has been completed[4].

Trademark which is registered can be renewed after every 10 years. This is to reduce the work load of trademark offices. Also trademark which is not used for more than 3 years is liable to be removed. This period is calculated from the on which trademark actually entered.

Concept of collective marks

The concept of collective trademarks is governed under trademark act 1999 in section 61-68. Collective marks means, A trademark that distinguish the goods or services of members of an association of person not being a partnership within the meaning of the Indian Partnership Act,1932 which is the proprietor of the mark from those of others.

Procedure for application in flowchart [to be inserted]

Well-known Trademark and Trans Border Reputation

India recognises the concept of the "Well-known Trademark" and the "Principle of Trans Border Reputation". A well-known Trademark in relation to any goods or services means a mark that has become so to the substantial segment of the public, which uses such goods or receives such services such that the use of such a mark in relation to other goods and services is likely to be taken as indicating a connection between the two marks.

Trans Border Reputation concept was recognised and discussed by the Apex Indian Court in the landmark case of N. R. Dongre v. Whirlpool (1996) 5SCC 714. The Trademark "WHIRLPOOL" was held to have acquired reputation and goodwill in India. The Mark "WHIRLPOOL" was also held to have become associated in the minds of the public with Whirlpool Corporation on account of circulation of the advertisements in the magazines despite no evidence of actual sale. Hence, the trademark WHIRLPOOL was held to have acquired trans-border reputation which enjoys protection in India, irrespective of its actual user or registration in India.

Legal Remedies available:

Under the Trade Marks Act, both civil and criminal remedies are simultaneously available against infringement. But Trade mark infringement is governed by common law mostly A trademark is said to be infringed by a person, who, not being a permitted user, uses an identical/ similar/ deceptively similar mark to the registered trademark without the authorization of the registered proprietor of the trademark. Passing off  is a common law tort used to enforce unregistered trademark rights. Registration of a trademark is not a pre-requisite in order to sustain a civil or criminal action against violation of trademarks in India. In India, a combined civil action for infringement of trademark and passing off can be initiated.Significantly, infringement of a trademark is a cognizable offence and criminal proceedings can be initiated against the infringers. Such enforcement mechanisms are expected to boost the protection of marks in India and reduce infringement and contravention of trademarks.

Relief granted by Courts in Suits for Infringement and Passing off

The relief which a court may usually grant in a suit for infringement or passing off includes permanent and interim injunction or damages..

The order of interim injunction may be passed ex parte or after notice. The Interim reliefs in the suit may also include order for:

  1. Appointment of a local commissioner, which is akin to an "Anton Pillar Order", for search, seizure and preservation of infringing goods, account books and preparation of inventory, etc.
  2. Restraining the infringer from disposing of or dealing with the assets in a manner which may adversely affect plaintiff's ability to recover damages, costs or other pecuniary remedies which may be finally awarded to the plaintiff.

Offences and Penalties

In case of a criminal action for infringement or passing off, the offence is punishable with imprisonment for a term which shall not be less than six months but which may extend to three years and fine which shall not be less than INR 50,000 but may extend to INR 200,000.

Tagline is a marketing tool for product and thus producer should never be lenient when it comes to registration of their intellectual property, as in it lies the consumers’ benefit.in order to rectify trademark one can take an advantage of the provision of filing an application before the Registrar of Trademarks or to the Intellectual Property Appellate Board (IPAB) where one can cancel or vary the registration of the trademark on the ground of any contravention or failure to observe a condition entered on the Register in relation thereto.

The application for rectification can also be filed for removal of an entry made in Register, without sufficient cause or wrongly remaining on the Register and for correction of any error or defect in any entry in the Register. While in case of licensing, the right in the trademark continues to vest with the proprietor. India is a member to TRIPS and Article 21 of the TRIPS dealing with Licensing and Assignment mandates that "... the owner of a registered trademark shall have the right to assign the trademark with or without the transfer of the business to which the trademark belongs."

 After all it is better to fall in line than to fall by the way side!!.

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[1] .section 11, trademarks act 1999

[2] Section 18 of trademark Act, deals with the procedure for making application for registration of slogan, logo, etc.

[3] Sub-section (2) of section 18 further provides for registration of several classes of goods by single application.

[4] Section 23 of trademarks act obliges registrar to register where the procedure for registration has been completed.

Tagged in: 2015
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