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Ubiquity Theory of Trademark Law


Authored by - Thejuswini

Keywords - Trademark law, Meaning Ubiquity Theory, Dilution Theory, Advantages, Disadvantages.


Abstract


Trademark law aims at safeguarding the logos, slogans, designs, words of organizations, which are already in existence. In short, it ensures that each and every trademark has its own uniqueness by restricting fraudulent use of the trademark. This article majorly lays emphasis on the theory of ubiquity of trademark law. It shall further discuss its meaning and how it came into existence. Furthermore, this article shall seek to differentiate the Ubiquity Theory of Trademark law from the Theory of Dilution with its pros and cons to trademark law.


Introduction to Ubiquity Theory of Trademark Law


According to Cambridge Dictionary, the term ubiquity means something or someone who is present everywhere.[1] As per Collins Dictionary, the word ubiquity means something that seems to be existing at different places at the same time.[2] The meaning of the word ubiquity as Merriam Webster is that ubiquity is something or someone who is omnipresent in nature.[3] Thus, by adding up all the meanings provided by different dictionaries, we could conclude that ubiquity is a thing or a person, who has the ability to exist at different places, at the same moment. When it comes to Ubiquity Theory as defined under trademark law it refers to the usage of trademark for several times for various goods and services.[4]


Origin of Ubiquity Theory


The concept or the theory of dilution has resulted in the introduction of Ubiquity Theory. The theory of dilution was firstly introduced in the United States of America by Mr. Frank Schechter who was a trademark attorney in the year of 1977.[5] Dilution means the usage of trademark by any other person other than the sole owner. This in turn results in lowering the distinctive nature of the trademark.[6] However, this particular situation does not create any sort of confusion or doubt in the minds of the customers. Even if it is creating any sort of confusion, it shall not be taken into consideration primarily because creation of confusion is not an essential component to determine dilution. All that matters is, whether using a particular registered trademark by a third party, in an unauthorized manner has resulted in reducing the connection between the customer and the sole owner. If it has resulted in reducing the distinctive nature then it is known as the principle of Dilution.


It was Mr. Frank Schechter's view that the usage of trademark by a third party would result in damaging or injuring the association, that the consumer has with the owner. Even though the definition of dilution was stating about the multiple use of trademark by the third party, Mr. Frank Schechter was not trying to point out the same. In fact, by introducing the dilution theory, he was heading us towards the issues that shall be faced when the owner himself uses the trademark several times. In short, he was emphasizing on how disadvantageous the theory of ubiquity could be when exercised.


Distinction Between Dilution Theory and Ubiquity Theory of trademark law


1. The theory or the principle of Dilution is provided under Section 29(4) of The Indian Trademark Act, 1999 whereas, the Theory of Ubiquity is not defined under The Indian Trademark Act, 1999.[7]


2. Dilution is when a third-party tends to use a registered trademark in order to conduct trade in an unauthorized manner. For a trade to fall under the ambit of dilution theory, it should fulfill three essentials. Firstly, it should have a similar or identical trademark as that of the reputed trademark. Secondly, the registered trademark should be used by the third-party to trade those goods and services which are not similar to that of the goods and services traded by the registered trademark. Thirdly, the third-party should make use of the advantage of the registered trademark to the fullest such that it results in lowering the uniqueness of the registered trademark. Though the scenario is not the same when it comes to theory of ubiquity. Ubiquity theory means the owner of the registered trademark or the reputed trademark itself uses it multiple times for trading goods and services which are no way related to the reputed trademark.


3. Dilution is considered to be disadvantageous to the owner as it shall result in minimizing the association of the consumer with the actual owner of the trademark. But ubiquity theory is considered to be advantageous as some scholars, justices and lawyers are of the opinion that a proprietor using his own reputed trademark to sell goods and services which are totally different from the reputed trademark shall not result in degradation of his own trademark. It would instead make him much stronger as it will increase the chances of the customers associating with the rightful owner of the trademark.


Pros and cons of Ubiquity Theory


There is no clarity onto whether ubiquity theory is advantageous or disadvantageous to trademark law as it has been clearly stated;the dilution of trademark shall only happen when a third-party trades unidentical goods and services, using a registered trademark in an unauthorized manner and not when the owner himself uses the registered trademark for multiple times to trade unidentical goods and services. Moreover, the Indian Courts have never came across an issue which deals with the ubiquity theory so as to establish whether ubiquity theory is advantageous or disadvantageous in actual.


Merits of Ubiquity theory


1. Firstly, it is said to be very much beneficial for the owner of the trademark as he can gain more monetary capital from the same venture.

2. Secondly, the owner cannot degrade his own trademark by using it several times.

3. Thirdly, it is believed that customer will have direct association with the owner of the trademark.

Demerits of Ubiquity theory

The only demerit that the theory has is that there can be a situation where the customers are provided with goods and services of lowest quality in several countries, where naked licensing is neither recognized not incorporated in the legislations pertaining to trademark.[8]


Conclusion

This article has pointed out the meaning of ubiquity as provided under different dictionaries along with its relation to trademark law and has explained the merits and demerits in a comprehensive manner. As Indian Courts have never come across such a situation, where ubiquity theory is used there are no proper interpretations regarding the same. There is a vacuum or a lack of information when we try to understand how this particular theory comes into play. Hence, ubiquity theory still remains as a principle, which is to be properly discussed and researched in order to understand the application of the same.


[1]Cambridge Dictionary, https://dictionary.cambridge.org/dictionary/english/ubiquity (Last visited: 2 Sep. 2020) [2]Collins Dictionary, https://www.collinsdictionary.com/dictionary/english/ubiquity (Last visited: 2 Sep. 2020) [3]Merriam Webster, https://www.merriam-webster.com/dictionary/ubiquity (Last visited: 2 Sep. 2020) [4] Singh & Associates, Ubiquity Theory of Trademark Law, https://www.mondaq.com/india/trademark/506460/ ubiquity-theory-of-trademark-law (Last visited: 3 Sep. 2020) [5] All Answers Ltd., Law Teacher, Dilution Under Trademark Law https://www.lawteacher.net/free-law-essays/business-law/dilution-under-trademark-law-business-law-essay.php (Last visited: 3 Sep. 2020) [6]Anubhav Pandey, The Doctrine of Dilution of Trademarks, https://blog.ipleaders.in/doctrine-dilution-trademarks/ (Last Visited: 3 Sep. 2020) [7] The Trade Marks Act, 1999, No, 47 Acts of Parliament, 1999(India). [8]Singh & Associates, India: Ubiquity Theory of Trademark Law,https://www.mondaq.com/india/trademark/506460/ ubiquity-theory-of-trademark-law (Last visited: 3 Sep. 2020)


References


1. Cambridge Dictionary, https://dictionary.cambridge.org/dictionary/english/ubiquity (Last visited: 2 Sep. 2020)

2. Collins Dictionary, https://www.collinsdictionary.com/dictionary/english/ubiquity (Last visited: 2 Sep. 2020)

3. Merriam Webster, https://www.merriam-webster.com/dictionary/ubiquity (Last visited: 2 Sep. 2020)

4. Singh & Associates, India: Ubiquity Theory of Trademark Law, https://www.mondaq.com/india/trademark/506460/ubiquity-theory-of-trademark-law (Last visited: 3 Sep. 2020)

5. All Answers Ltd., Law Teacher, Dilution Under Trademark Law, https://www.lawteacher.net/free-law-essays/business-law/dilution-under-trademark-law-business-law-essay.php (Last visited: 3 Sep. 2020)

6. Anubhav Pandey, The Doctrine of Dilution of Trademarks, https://blog.ipleaders.in/doctrine-dilution-trademarks/ (Last Visited: 3 Sep. 2020)

7. The Trade Marks Act, 1999, No, 47 Acts of Parliament, 1999 (India).

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