Trademark Protection & Safeguards for Jewellery and Watch Designers in India
Creative designs aren’t something that meticulously happen, it takes a great amount of efforts and creative skills to create something that would please the eyes of every person. The same can be said about the jewellery and watch designers who strive to create something new and different in their each design and the same is their Intellectual Property (IP) which needs due protection and safeguards. These efforts are hardly hit and discouraged by the menace of piracy, where people utilise the efforts of the jewellery and watch designers to create copied products and sell them in the market at cheap rates. This, is taken one step further, when the pirated copy also uses the trademark of the jewellery and watch designer of the company which produced the original design. This act passes of the copied goods as original good thereby, not only the affecting the Company economically and also has a negative impact on the goodwill and the ultimate heat is borne by the jewellery and watch designers. Therefore, it is important for these designers to protect their names or the brand names from being using without consent and illegally by protecting them under the frame work of Trademarks Act, 1999.
The logo or the brand name under which the jewellery and watches are sold can be protected under the Trademarks Act, 1999. It is used to differentiate the goods of one brand from another and the original goods from the pirated ones. The name and the goodwill of the brand is most important for jewellery designers and watch brands and the name has to associated with the good quality and status in order to sell. The Trademark Act, 1999 confers a protection for a period of 10 years which can be renewed after the expiry perpetually. Therefore, protection of the name under trademark become a key for successful business.
The following procedure has to be following for the registration of trademark by jewellery and watch designers:
Step 1: Filing Trademark application with the Trademark Registry
The following information is required to file an application for trademark registration:
Name, address, nationality and legal status of the applicant.
A graphical representation of the mark.
Whether the mark is proposed to be used or as been in use since before, if used from before the date of first use.
The details of the goods and services with respect to which the mark would be used.
If the mark has some colour, then the details of the colour.
Trademark Registry offices are located in Delhi, Mumbai, Kolkata and Chennai. The registry has to be decided on the basis of their territorial jurisdiction.
Step 2: Trademark examination by the Trademark Registry
The trademark application is examined on the basis of absolute of relevant grounds by the examiner. The trademark can either be accepted or objected by the examiner.
In case it is accepted, the mark is published in the trademark journal for the third parties to raise objects. It is not accepted, the objections are send in the form of an examination report and the applicant is given a period of one month to reply to thr given objections. When such a reply is accepted by the registry, the mark is published in trademark journal.
Step 3: Publication of mark in the Trademark Journal
The purpose of publication in the journal is to give an opportunity to the public to oppose the registration of the given mark, of they deem it to be non-registrable either on absolute or relevant grounds. If an opposition is raised, the same is contested between the parties and decision is taken by the registry.
Step 4: Registration of Trademark
In case, no opposition is filed within 3 months or if the Registry accepts the mark after opposition, the mark is entered into the register of trademarks and a certificate of registration is issued by the Registry.
In the landmark case of Titan Industries Ltd. vs Kanishk Jewellery, 2003 (26) PTC 145 Mad, the Plaintiff instituted a suit in the Madras High Court claiming passing off of Jewellery protected under the mark ‘Tanishq’, which was claimed to be a name invented and coined by the Plaintiff Company. The Defendant had opened a new showroom for Jewellery by the name of ‘Kanishk’. The Court dismissed the suit of passing on the ground that though both the marks was used for same goods, the target customers are different and the Defendant in their advertisement have always distinguished themselves by associating them with their family business of Khazana Jewel. Though no relief was granted for Tanishq, still it acted as an example for the Jewellery brands to take steps to protect their rights.
In M/S.Goldgem Overseas Vs. Flawless Diamond (India), Ltd Notice Of Motion No.4657 of 2007 in Suit No.3372 of 2007, the Plaintiff claimed infringement of registered trademark of ‘Aum’ by the Defendant. Both the parties were involved in the business of Jewellery. The Bombay High Court held the Defendant liable for infringement of the mark ‘Aum’, as the defendant used a deceptively similar mark which could confusion in the minds of the consumers which respect to it source, The Court further, passed a permanent injunction, restraining the Defendant from using the mark ‘AUM’ or any similar and deceptive words, name or logo in respect of their jewellery product.
Further, in Rolex SA v Alex Jewellery Pvt Ltd, CS (OS) 41 of 2008 the Plaintiff which is a company incorporated under the laws of Switzerland and is involved in the manufacturing of top quality premium class watches filed a suit of infringement of the mark ‘Rolex’ against the Defendant. The Defendant was alleged to carry on illegal business of manufacturing, selling and distributing jewellery under the name of Rolex and also had a website www.rolexjewelleryhouse.com for the same. The Court held that the mark ‘Rolex’ qualified as a well-known mark and hence, by virtue of Section 29(4)(c) of the Trademark Act of 1999, the Defendant is restrained from using the ‘Rolex’ in any way whatsoever. The Court further ordered an injunction against the Defendant and also ordered to take down the website.
Therefore, it is key for any company involved in jewellery or watch business to first identify their Intellectual Property, then protect and safeguard it from illegal and unauthorised commercial exploitation. In the fashion industry the business is based on the how well known and reputed the company is, hence, the protection of the trademark becomes of utmost importance, to differentiate the products of the company from the other competitor and also to prevent any illegal and/or unauthorised usage of the same though piracy.
Authored By: Adv. Anant Sharma & Ananya Jain