The use of trademarks has been used more frequently on non-competing goods in recent years. Domino’s Pizza v. domino, Finland Vodka v. Finland Cheese, Dove beauty bar v. Dove chocolate. Instead of being deemed a trademark violation, it is treated as usual & expected activity. The legislation allows enterprises to use the same name if they sell in different markets and have unique ” products. ” In his article, the author tries to exemplify the enterprises that can use a similar brand name to sell different products generally referred to as “brand twins”. As decided by the recent order, there are certain exceptional brands that have been given special privileges in light of IP Protection which otherwise will be treated as infringement of trademark and the same has been discussed in this article. Keywords: Trademark Infringement, IP Law, Brand, Amul, Dominos
INTRODUCTION
The Department of Industrial Policy and Promotion’s Office of CGPDTM in India investigates the filing of various intellectual property rights. In the year 2021, around 256 thousand industrial trademarks were registered in India. With the globalization and development of technology around the globe, IP-intensive companies and industries are emerging each day and understanding the importance of IP protection.
Think of the purple-colored Cadbury chocolate – that particular shade of purple is trademarked. Think of the golden arches design associated with McDonald’s packaging; that specific symbol is trademarked. Both the distinctive purple color and the familiar McD logo instantly create brand and product glory in consumers’ minds.
In general, a trademark is the legal recognition of the brand, which distinguishes your identity and makes it unique. It is a word, phrase, logo, or configuration that recognizes and distinguishes the sources of goods of one enterprise from another. India is a signatory to 2 major international treaties: (i) Paris Convention for Protection of Industry Property, 1883 and (ii) TRIPS Agreement (Trade-related aspects of IP Rights), 1994. With globalization, trademarks have attained immense value and require uniform standard protection as recognized in TRIPS. This led to the annulment of the old Indian Trade & Merchandise Marks Act, 1958, and the enactment of the new Trade Marks Act, 1999. This Act provides for trademark registration, protection, and penalties for infringement.
CAN COMPETITIVE BUSINESSES CHOOSE SIMILAR BRAND
NAMES?
Think of Pominick as a company that sells dark chocolates, and then imagine Pominick as a company that sells pizza. As a consumer, how would you distinguish Domino’s pizza selling brand from Pominick’s? Can Pominick sell pizza with a similar brand name as Dominoes?
This question has two facets:
1- NON-COMPETING BUSINESS
The use of overlapping trademarks is not considered infringing if the products or services of the companies are not competing and are not distributed in the same markets. There are many brands in the market that use the same brand name for different types of business or product categories, which are called “brand twins. & quot; Is Dove Beauty Bar and Dove Chocolate owned by the same company? No, although two different businesses possess the same registered name, it has different product. Unilever, based in the United Kingdom, owns soap, and Mars, based in the United States, owns Dove chocolate.
There are many detriments of using the same brand name as it tarnishes individuality and affects brand recognition. But it is not possible to own a “word”. Even companies like Unilever or Apple didn’t make their investment by trademarking their brand name in all categories of products. So, to maintain genuineness and uniqueness, one must do the proper research in the niche product area before finalizing its brand name.
2- COMPETING BUSINESS
Generally, businesses that are competitive in nature are restrained from opting for trademarks that are similar to any businesses that are already in existence. One of the primary purposes of trademarks is to dissuade consumer confusion. The ice cream parlor with mouthwatering flavors might lose business to an identically named parlor that sells lousy ice- cream.
In the case of Dominos IP holder LLC & Anr v. Ms Dominick Pizza & Anr, 1 the Court ordered to give Domino’s protection of its mark “Dominos Pizza” and restrained Dominick Pizza from selling, advertising, or marketing under the marks “Cheese Burst” and “Pasta Italiano.” The Court further suspended the domain names of “Dominick Pizza”. Using an identical name with similar flavors is deceptive and creates disarray in consumers’ minds.
If a business uses a trademark that is identical or confusingly similar to that of a competitor, and there is a chance that customers may mistake the source of the goods or services, then that business has committed trademark infringement.
EXTENDED PROTECTION TO THESE BUSINESSES: EXCEPTION
TO NON-COMPETING BUSINESS
Some businesses in the market have a powerful history and emotion attached to them, and these businesses should be shielded more comprehensively to protect their cordiality and maintain their authenticity. The same has been done in a recent matter of “Amul”. AMUL – The Taste of India
In a recent case of Kaira District Cooperative Milk Producers Union Ltd. vs Maa Tara Trading Co. 2 The Calcutta High Court said that the “Amul” brand symbolizes an Indian brand that has become a household name and they should be given extensive protection against unauthorized use even with respect to non-competing goods and services as it represents the progress towards wealth in India’s rural areas. Therefore, the court restrained Maa Tara, a local candle distributing company from using the trademark “Amul Candles” as it violates the statutory rights as well as the common rights of Amul which has resulted in the loss of revenue.
1 Dominick severely tarnishing Business & Trademark, available at: https://www.livelaw.in/news-updates/delhi- high-court-dominos-trademark-infringement-dominick-izza-reputation-208033 (Visited on September 4, 2022)
2 Trademark ‘Amul’ deserves broad protection against non-competing goods, available at: https://www.barandbench.com/amp/story/news/litigation/trademark-amul-deserves-broad-protection-against- non-competing-goods-services-calcutta-high-court (Visited on September 5, 2022)
Despite numerous court cases, many companies still make crores from the “Amul” trademark tarnishing the brand image and being deceptive to the general populace. Amul Macho, for instance, has sold innerwear for years without being ordered for injunction by the Court. The rights of these brands, which contribute significantly to the Indian economy and the revolution, must be fiercely protected.
Conclusion
The use of technology dictates almost everything from techniques and methodologies to IP conflicts. Refinement in Technology will lead to an increase in crimes and trademark infringement, making it simpler for inferior businesses to defame products from renowned enterprises. It is a well-known legal norm that a business can acquire exclusive rights to use a specific phrase within certain bounds. The word must have been used to the point where it has become distinctive and has lost its original meaning. There are certain brands that need special protection because of the heritage and unique identity they harbor and these brands can be safeguarded by passing special laws that specify the requirements to qualify as “exceptions to non-competing business”.