Logo - Trademark or Copyright?

Trademark Jul 18, 2021 0 Add to Reading List

Introduction

A logo can be described as a design, an image, group of letters or a combination of all, that represents a brand, a business or a service. Logos are basically “brand identities”, which resonate with the general masses. Since, these are visual and pictorial representations, they are easier to remember and relate to. Further, logos can be broadly categorized into seven types namely;

Abstract mark: It is a pictorial symbol which is exclusive and specific in nature. The design in this type is more on the geometrical abstract side rather than a pre-defined design. Such logos help consolidate the brand into a solo, distinct impression. For example, Pepsi.

Mascot mark: Such logos generally comprise of a character illustration, which is cartoonish and fun. For example, KFC.

Letter mark: Also known as ‘Monograms’, these logos comprise of letters, typically initials of the brand. They are very easy to identify and are typographic in nature. For example, HBO.

Picture mark: This picture-based mark, is mostly an icon or a graphic logo. For example, Apple.

Word mark: It is a font-based logo which emphasizes solely on the name of the brand, business or service. For example, Coca-Cola.

Combination mark: As the name suggests, it is basically a combination of all of the aforementioned marks. It consists of alphabets and pictures, which are combined in order to create a unique image. For example, Doritos.

Emblem mark: It is a type of logo which consists of words inside the pictorial designer or icon. For example, Harley Davidson,

Since these logos are unique designs representing businesses, brands and services, they need to be protected as a part of one’s business assets. Such logos constitute as an integral intellectual property of the business and hence need protection in the form or either a trademark or a copyright.

A trademark is a territorial right and can be defined as “a sign that individualizes the goods of a given enterprise and distinguishes them from the goods of its competitors.” In simple terms, it is a tool which helps deliver the level of authenticity to the consumer. The most important characteristics of a trademark include, distinctiveness, source, quality, advertising and goodwill. It consists of words, designs, letters, slogans, symbols, numerals, etc. There are two symbols, namely; ™ which means Temporary Mark and ® which means Registered Trademark. Trademarks in India are governed by the Trademarks Act, 1999 and are required to be renewed every 10 years, in case a trademark is not in use for 5 years continuously, it will expire. Interestingly, well-known brands or businesses such as TATA need not register their trademarks, as they are already protected under all the 45 classes as well-known trademarks in India and under the Paris Convention, TRIPS Agreement around the world. Other benefits of trademark registration include, exclusive identity, easy renewal, economical and a business asset.

On the other hand, a copyright is a tool to protect the literary and artistic work of an individual. A few examples include, music, paintings, writings, fine arts, designs, etc. The most important characteristic of a copyright is that, it does not protect the idea itself but the way of expression of that particular idea. If the logo designed is an original artwork such as a graphic or a drawing, it can very well be copyrighted. In India, copyrights are governed by the Copyright Act, 1957 and such protection is granted for the lifetime of the author and an additional 60 years from the year in which the author died. The symbol for a copyright is ©, for instance, “©2020 ALL RIGHTS RESERVED”.

In view of the fact that a logo is the visual representation of the brand or business, it also needs to be protected from being infringed or misused. Although is it not compulsory to get a logo registered as a trademark or a copyright but it is always beneficial to do so, since it provides a strong legal standing. Basically, registration is a way to declare exclusive rights over it. In addition, there is a presumption of ownership, which is crucial in case of diversification of the business; it is cost effective in the long-run; entitled to statutory damages in case of infringement and prevents competitors from copying. However, there are certain elements such as the scope of protection, moral rights, procedure in case of conflict, public interest, jurisdiction and term of existence which have to be taken into consideration while seeking protection for a logo.

Copyright Registration Process

The undermentioned is the process for copyright registration of a logo.

Step 1: An application in the format of Form IV (Schedule 2 of the Copyright Act, 1957) has to be filed and send to the registrar along with the requisite fee and three copies of the published work. A separate application has to be filed for each separate work. The fees may differ according to the subject matter of the application.

Step 2: The application has to be duly signed by the applicant and an advocate in whose favour a Vakalatanama or POA (Power of Attorney) is being executed.

Step 3: After the application is filed and recorded, the registrar of copyrights examines the application. After due analysis and examination, a diary number is issued to the applicant and then there is a mandatory minimum waiting period of 30 days, in case any objections are to be raised against the application.

Step 4: In case, no objections are raised within the 30-day time period, the examiner will check the application for any disagreements. If none are found, the registration of copyright of a logo will be complete and an excerpt will be sent to the registrar, so as to make an entry in the register of copyright.

Step 5: If case, any objection is raised within the 30-day time period, the examiner would first try to convince the third party to take back the objection claim. If this is not possible then after receiving a reply from the third party, the examiner will send letters to both the parties, informing them about the objection raised and will call for a hearing.

Step 6: If after the hearing the objection is settled, the examiner will examine the application once again and accept it, in order to forward it for registration.

Step 7: If after the hearing the objection is still not settled, then the examiner will have to reject the application by sending a letter of rejection to the applicant.

Trademark Registration Process

Step 1: Trademark Search

The very first and the most important step in the process of trademark registration is a trademark search. It is a basic yet an intricate search to confirm and verify if your business logo is similar to any other pre-existing registered trademark in that particular class. The search can be either done offline or online, but it is always beneficial to undertake both the searches. A public search can also be carried out on the trademarks database, available with the Trademarks Registry.

Step 2: Trademark Application

Based on the trademark search results and provided that your logo is found to be unique, a trademark application (Form TM) has to be drafted and filed either online or offline at the Trademarks Office. The application can be filed either under single-class or multi-class depending upon the intended use. In case the application claims prior use, then an affidavit and valid evidence has to be filed supporting such usage.

Step 3: Application Examination

Once the trademark application is filed, a mandatory examination, in accordance with the guidelines of the Trademarks Act, 2016 is carried out by a competent examiner and a report is issued on the same within a period of 30 days of filing the application. Further, a reply to the report is to be filed within 30 days after receiving the report, stating arguments or evidence against any objections raised, so as to waive them off.

Step 4: Post- examination

After filing a reply to the examination report, the examiner, if still not satisfied or if the objections are not met, may call for a hearing. Once the said hearing is complete, the examiner might either accept the mark and forward the application for publication in the journal or reject the application in case objection still lasts.

Step 5: Advertisement of the Trademark

After acceptance of the application, the said trademark is advertised and published in the Trade Marks Journal for a period of 4 months. This is done to invite opposition if any from the general public.

Step 6: Opposition from General Public

Post the advertisement and publication, any aggrieved person can file a notice vide Form TM-O within 4 months of such publication, to oppose against the said registration. If there is objection with respect to the application, then a counter-statement is filed along with evidence and a hearing may also be held. In case, there is no objection from the general public, an auto-generated trademark registration certificate is issued within a week’s time.

Step 7: Registration of the Trademark

Finally, after all the objections are met, the application is forwarded for registration. After successful registration, the trademark is valid for 10 years, after which it has to be renewed for the next 10 years, within a specified time period.

Note: There are various costs involved at every level of the process. Such costs vary depending upon the subject matter and other complexities of the case.

Now the question remains which one to choose? Should one go for copyrighting or trademarking a logo?

There is a very fine line between the two in the present scenario but a trademark mainly helps in preventing competitors from using your logo in the marketplace, whereas a copyright prevents any kind of copying related to the logo. Therefore, a trademark protects the legitimacy of the brand and a copyright protects the ownership of the artistic work. Both of them secure the rights of the owner, by providing a valid and strong legal standing.

Logo Infringement Case Studies

Louis Vuitton v. Louis Vuitton Dak

This case of logo infringement involves world famous fashion company, Louis Vuitton, which sued a South Korean restaurant, Louis Vuitton Dak for using its “mirrored logo and name”. The famous logo and name are the identity of the brand in the market and such gross misuse amounted to confusion among the consumers, who linked this restaurant to the brand. The company sued the restaurant for non-compliance and a whopping amount of $1,450,000 Later on, the restaurant modified its name to “LOUISVOI TONDAK”.

PayPal v. PayTM

These companies are leaders in the digital transaction’s markets, in their respective countries. PayPal, a USA based e-wallet had accused PayTM, an Indian e-wallet and fin-tech company, of copying its logo design and colour scheme, so as to grow its own consumer base. On 18th November, 2016 the former filed an objection in the Indian Trademark Office accusing the latter of trademark infringement. This objection came exactly 10 days after Indian PM Narendra Modi announced demonetization, which lead to an increase in digital transactions. Since, Paytm was the market leader at that time, the daily transactions surged from 2.5 million to over 7 million. The objection seemed rather opportunistic and it was decided that although the colour scheme might look similar it is not and thus cannot be said to be deceptive. Moreover, PayTM is tailored in such a way that it is viable for the Indian consumer base and hence it was held that both the logos are distinctive and PayTM did not infringe on the intellectual property rights of PayPal.

Conclusion

In conclusion, protection of intellectual property is a long-term investment for any business enterprise as it benefits the owner by providing statutory protection to the brand identity. Registration of the brand logo is of “high evidentiary value” in both, trademark and copyright enforcement proceedings. Therefore, in an ideal scenario, it is always favourable to seek protection for unique brand logos under both trademark and copyright laws.

References