What’s the Limit of Trademark Protection? | IP Conversations

Why? What? When? How? These are some of the most used words in John’s dictionary. He’s pretty curious about the workings behind what happens in his life, and many of those have to do with the inventions and the workings of intellectual property in the world around him.

Trademarks allow businesses and people to protect their brands, and some trademarks are by themselves, worth more than the individual elements they sell. Brand recognition is important to pretty much every major business enterprise, and the expiry of a registered brand can be a major problem. Enough so that John has a conversation with IP Geek on how to deal with it.

Hi IP Geek! Some friends of mine got their trademarks granted recently. On our trip to the museum last weekend, they told me their attorneys had reminded them to renew their trademarks once the time limit was up. This surprised me- I know trademarks like Disney and Coca Cola have been around for decades. There’s a time limit?

John, you need to remember that generally speaking, IP only exists for a limited time. The only arguable exception is a Trade Secret, and that’s only if you take into account a lot of unlikely hypotheticals.

Trademarks are unique in that they can be extended for an indefinite period of time, unlike Patents, Copyrights, or Designs.

Trademarks are granted to a distinctive word, collection of words, logos, colours, sounds, scents, or packaging for a period of ten years by default. Once this period is about to end, the applicant can renew their marks for another ten years for a fixed fee. This renewal can theoretically go on forever- or at least until the legal system is in force.

One of the reasons for renewal periods is that not all businesses will use their marks for a long time- some may give up on their business early, for example. Others may just focus on using more popular trademarks instead of one that isn’t not working. India doesn’t have the requirement for mandatory proof of usage (the USA does!) but the renewal fee and process is there to deter people from mindlessly hogging unused trademarks.

Do you think this is biased in favour of large businesses? I mean, it’s only smaller organisations, like my friends, which would see this as a disadvantage.

Not at all! One of the biggest advantages of Trademarks is that they can protect the interests of small business owners against large corporations, because it gets the law on their side for what is a relatively small fee.

A good illustration of this is the recent Happy Belly Bakes Case, where a small bakery in Bengaluru with a registered mark fought against Amazon, one of the largest corporate giants ever, and won.

Large organisations cannot protect every single possible potential trademark, even if they have the resources to do so. It would be cumbersome and unnecessary, and there are even provisions for the cancellation of a registered Trademark which has not been used by the owner for a period of five years.

As long as you’re using your mark faithfully, the registration can last for as long as you want it to- you only need to renew it on time. The advantages far outweigh the inconveniences.