The Trademark Laws

Sanjeev Kumar Sanjeev Kumar ChaswalChaswalLL.M LL.M (IPR and ARB), (IPR and ARB), LL.M LL.M (IPR and ARB), (IPR and ARB),

MS MS Cyber Law & Cyber SecurityCyber Law & Cyber Security

IP Attorney & AdvocateIP Attorney & AdvocateHigh Court of DelhiHigh Court of Delhi

© Copyright sanjeev kumar chaswal 2012

Types of Intellectual Property

ßCopyrightsßTrademarksßPatentsßIndustrial Design RightsßIndustrial Design RightsßTrade SecretsßGeographical IndicationsßSemiconductor Integrated

Circuits Layout ßPlant variety rights

INTELLECTUAL PROPERTYINTELLECTUAL PROPERTYßCOPYRIGHT - relate to literary or creative works.ßTRADEMARKS - relate to product names or symbols.ßPATENTS - relate to inventions.ßTRADE SECRETS-Any confidential business

information that provides an competitive edge.ßGEOGRAPHICAL INDICATIONS- name or sign used

on products which belongs to specific geographicalon products which belongs to specific geographicallocation or origin.

ßSEMICONDUCTOR INTEGRATED CIRCUITS LAYOUT - provides for protection of Semiconductor Integrated Circuits Layout Design and for matters connected therewith.

ßPLANT VARIETY RIGHTS- Granted to the breeder of a new variety of plant that gives exclusive control over the materials seed, cuttings, divisions, tissue culture.

FOR MOST PRODUCTS EVERY FORM OF IP RIGHTS CAN BE OBTAINED

ßCAMERAà

PATENT -For every Novel or improved mechanism.

DESIGN For novel outer shape & Contour / Configuration.

“TRADE MARK- Brand name or Logo for goods denoted as

®

Copy right- For Instruction / manual booklet denoted as ©

CD PLAYER

Industrial Industrial design design protection for protection for

Music played Music played on the CD on the CD player is player is protected by protected by copyrightcopyright

protection for protection for 3D shape 3D shape

Brand Brand namename--registered registered under under trademarktrademark

VariousVarioustechnicaltechnical partsparts&& mechanismsmechanismsareare subjectsubjectmatermater ofofprotectionprotectionunderunder PatentsPatents

What is TrademarkßA trade mark is a distinctive sign or indicator used by an

individual, business or other legal entity to identifyfor consumers that the products or services on or withwhich the trademark appears originate from a uniquesource, designated for a specific market and todistinguish its products or services from those of otherentities.

ßSection 2(1) (m) of TM Act, 1999 defines ‘Mark’ as “MarkßSection 2(1) (m) of TM Act, 1999 defines ‘Mark’ as “Markincludes a – Device, brand, heading, label, ticket, name,signature, word, letter, numeral, shape of goods,packing or combination of colours or any combinationthereof.”Example ‘M’ – written in a particular style with yellowcolour for MacDonald's’; 555/777 numerical used fordetergent soaps; ‘signature’ used as a mark for alcoholetc. Trademark may also be three-dimensional (e.g.neck of bottle).

Registration contents in Trade Marks

NameNameLogotypeLogotypeLogotypeLogotypeSymbolSymbolSloganSloganShapeShapeColorColor

Objects of Trademark Registration ß It deal with the precise nature of the rights, which a

person can a acquire in respect of a Trade Mark.ßThe mode of acquisition of such rights.ßThe method of transfer of those rights to others.ß the precise nature of infringement of such rights and

the remedies available in respect thereof.ßA person who sells his goods under a particular tradeßA person who sells his goods under a particular trade

mark acquires limited exclusive right to use of themark in relation to those goods.

ßA trade mark may be registered or unregistered. Anunregistered trade mark is called common law mark.

ßA trade mark when registered gets a stableexistence. A registered trade mark can be in relationnot only to its existing use but also for a proposeduse.

TRADE MARKS CAN BE REGISTERED IF

A trade mark which consists of at least one of thefollowing essential characteristics can be registered.

a)The name of a company, individual or firmrepresented in a particular or special manner;

b) The signature of the applicant for registration;b) The signature of the applicant for registration;c) One or more invented words;d) One or more words having no direct reference to

the character or quality of the goods except theexceptions listed in the next section;

e) Any other distinctive trade mark; andf) A trade mark which has acquired distinctiveness by

use over a prolonged period of time.

Functions of a Trade Markß It identifies source of the goods / manufacturers.ßTo signify that all goods bearing the same trade

mark have a single source. ß It acts as prime instrument in advertising and selling

the goods for creating an image for products.ßA registered trademark gives the right to exclusive

use of the mark.use of the mark.ßA registered trademark serves as a proof of

certificate in court proceedings.ß It has acquired importance over the years, viz. to

protect the trade and business interests of the ownerof the brand, as also the goodwill associated with thebrand, in case of infringement of trade mark.

Rights of registered markßCertain rights are attach to a registered mark, such

exclusive rights can be enforced by way of anaction for trademark infringement by owner of aregistered trademark to prevent unauthorized use ofthat trademark and may initiate legalproceedings for trademark infringement.

ßwhile un-registered trademark rights may be enforcedpursuant to the common law tort of in the nature of“passing off”.

ß It should be noted that trademark rights generallyarise out of the use of, or to maintain exclusive rightsover, that sign in relation to certain products orservices.

Benefits of RegistrationßThe fundamental benefits of a trademark is to

exclusively identify the commercial source or origin ofproducts or services, so a trademark, properlycalled, indicates source or serves as a badge of origin.Trademarks must be clear and distinct from each other.

ßTrademark is a symbol that indicates, who isßTrademark is a symbol that indicates, who isresponsible for the goods placed in the market.

ßTrademarks help to distinguish between the goods ofcompeting traders.

ßTrademark helps a customer to buy goods of a certainquality (e.g. color, size, weight, fragrance, taste.)

WHO GETS TRADE MARK PROTECTION

ßA trade mark is granted protection specifically tothe applicant on the basis of :

ßßFirstFirst AdoptionAdoptionßßFirstFirst UserUserßßFirstFirst InventorInventorßßFirstFirst InventorInventorßIn case of the plaintiff is having adoption and later

use but claimed prior registration of thetrademark than the defendant, who is firstInventor / Adaptor and having prior Use, hence,first Invention / Adaption and having prior User ofthe mark, which will be superior then theregistration granted to plaintiff.

A trademark may be designated by the following symbols

ß™ (for an unregistered trade mark ) that is,a mark used to promote or brand goods)

ß℠ (for an unregistered service mark, thatis, a mark used to promote or brandservices)services)

ß®(for a registered trademark)ßA trademark is typically a name, word,

phrase, logo, symbol, design, image, or acombination of these elements. There is alsoa range of non-conventional trademarkscomprising marks which do not fall intothese standard categories, such as thosebased on color, smell, or sound.

ORIGIN & HISTORY OF TRADE MARKS

ß In trademark history, it is usually reportedthat blacksmiths, who made swords in the RomanEmpire are thought of as being the first users oftrademarks.

ßßBAKERSBAKERS LAWLAW PRECEDENTPRECEDENTThe Anglo Indian trademark law had its origin datingback to 1266. It was also called as the Bakers Markingback to 1266. It was also called as the Bakers MarkingLaw. As the name says the law required bakers toplace a mark on the loaves of bread that they sold,identifying the baker.28 Any bread offered for saleunstamped was at once confiscated by the “officer ofabundance” and the offending bake was mulcted inheavy damages.

ßOne of the important acts in the history of trademarksis the law of bread and beer assizes.

ßBAKERS LAW-ß The statute laid down a uniform acceptable standard

of measurement, it defined the statute by declaringthat ,by the consent of the whole realm of England,the measure of the king was made that is to say thatan English penny, called a sterling round and withoutany clipping shall weigh thirty two wheat corns in themidst of the ear, and twenty pence do make andtwelve ounces one pound and eight pounds do make atwelve ounces one pound and eight pounds do make agallon of wine ,and eight gallons of wine do make aLondon bushel, which is the eighth part of a quarter.

ßSection 38 of the Usages of Winchester, whichprobably antedate 12751275, requires every baker to puthis recognised stamp (sun sel sunu) upon his bread.

ßMarks were registered with the local officer and weremade with wood or metal and simple flowertechniques and designs.

ßOther notable trademarks that have been used for along time include ”Löwenbräu”, which claims use ofits lion mark since 1383, Registered trademarks involveregistering the trademark with the government. Theoldest registered trademarks in various countriesinclude:

ßUnited States Oldest trademark : Samson (a rope-making company), featuring a depiction of the Biblicalfigure Samson wrestling a lion, was the first to betrademarked in the United States in 1884, and is stilltrademarked in the United States in 1884, and is stillused by that company today.

ßßBassBass BreweryBrewery's's logologo becamebecame thethe firstfirst imageimageßß toto bebe registeredregistered asas aa trademark,trademark, inin 18751875ßUnited Kingdom Oldest trademark: 1876 – The Bass

Brewery's Red Triangle for ale was the first trademarkto be registered under the Trade Mark Registration Act1875.

TRADEMARK LAWS IN INDIA ßWhile some form of proprietary protection for marks in

India dates back several millennia, India’s statutoryTrademarks Law dates back to 1860. Prior to 1940 therewas no official trademark Law in India.

ßNumerous problems arouse on infringement, law ofpassing off etc and these were solved by application ofsection 54 of the specific relief act 1877 and theregistration was obviously adjudicated by obtaining aregistration was obviously adjudicated by obtaining adeclaration as to the ownership of a trademark underIndian Registration Act 1908.

ß To overcome the aforesaid difficulties the IndianTrademarks Act was passed in 1940, this correspondedwith the English Trademarks Act.

ß India’s Oldest trademark :M/s. James Buchanan &Company UK has filed trademark Application no. 10 on11//66//19421942 forfor thethe markmark BLACKBLACK andand WHITEWHITE (scotch(scotchwhisky)whisky) which is still registered up till 2016

ßAfter this there was an increasing need for moreprotection of Trademarks as there was a majorgrowth in Trade and Commerce.

ßThe replacement to this act was the Trademark andMerchandise Act 1958.This Act was to provide forregistration and better protection of Trademarks andfor prevention of the use of fraudulent marks onmerchandise. The objective of this act was easymerchandise. The objective of this act was easyregistration and better protection of trademarks andto prevent fraud.

ßThe re-appellation of the Trademarks andMerchandise Act 1999; was done by the Governmentof India, in compliance with the TRIPS obligation onthe recommendation of the World TradeOrganisation.

ßThe object of the 1999 Act is to confer the protectionto the user of the trademark on his goods andprescribe conditions on acquisition, and legalremedies for enforcement of trademark rights

ß It will for the first time protect service marks andgive provision of registration for collective marks, itwill also differentiate between well knowntrademarks and trademarks in general, and alsotrademarks and trademarks in general, and alsospecial treatment and rights are envisaged for wellknown trademarks. The act of 1999 also gives policethe right to arrest in case of infringement.

ßThere are definitions of terms frequently used,enhanced punishment for offenders, increased theperiod of registration, registration of non- traditionaltrademarks.

ßsome points of changes that are present between the1958 act and 1999 act, it can be said that the 1999act is a modification of the 1958 act, it has providedexhaustive rules. The rules of this act are called asTrademark Rules 2002.

ßBoth the Act and its set of rules came to effect onSeptember 15th 2003. The trademark act 1999 andits trademark rules 2002 presently govern Indianits trademark rules 2002 presently govern IndianTrademark Laws in India. Laws of trademarks arebased on distinctiveness and deceptive similarity. Ifdistinct signs are freely used the brand equitycreated by one person will be freely used by another.The value of distinctive sign depends on sales volumeand public association of sign with quality.

INDIAN TRADE MARK ACT, 1999 SALIENT FEATURES

ßSome major changes brought about in the law oftrade marks in India by the Trade Marks Act, 1999 aresummarised as under:

ß Inclusion of trade mark for services in the definitionof trade mark;

ßA new provision for registration of Collective Marks;ßA new provision for registration of Collective Marks;ßProhibition of registration of certain marks which are

mere reproductions of or imitations of wellknown marks;

ßProvision for filing a single application for registrationin more than one class of goods and/or services;

ß Increasing the term of registration of a trade marksfrom 7 to 10 years and providing a grace period of sixmonths for payment of renewal fees;

ßAmplification of circumstances in which validity ofregistration can be contested;

ßVesting the final authority in the Registrar fordisposing of application for registration ofCertification Trade Marks;

ßHarmonizing penal provisions of the Trade Marks Lawwith The Copyright Law;with The Copyright Law;

ßProvision for establishment of an Appellate Board.ßThe use of a trademark in this way is known

as trademark use.

ßDifferent goods and services classified by the NICEClassification 45 trademark classes (1 to 34 covergoods, and 35 to 45 services) to unify classificationsystems around the world.

Procedure for Registration

a)a) Filing of TM applicationFiling of TM application

b) Examinationb) Examination

c) Acceptance and publicationc) Acceptance and publication

d) Opposition, if anyd) Opposition, if any

e) Registratione) Registration

TM Registration Process

The Trademarks Act 1999ß Chapter 2 - The Register and Conditions for Registrationß (Covers section 3 to section 17)ßß Chapter 3 Chapter 3 -- Procedure for and Duration of RegistrationProcedure for and Duration of Registrationß (Covers section 18 to section 26)ßß Chapter 4 Chapter 4 -- Effect of RegistrationEffect of Registrationß (Covers section 27 to section 36)ßß Chapter 5 Chapter 5 -- Assignment and Transmission.Assignment and Transmission.ß (Covers section 37 to section 45)ß (Covers section 37 to section 45)

ßßChapter 6 Chapter 6 -- Use of Trade Marks and Registered UsersUse of Trade Marks and Registered Usersß (Covers section 46 to section 56)

ßßChapter 7 Chapter 7 -- Rectification and Correction of the Register.Rectification and Correction of the Register.ß (Covers section 57 to section 60)

ßßChapter 8 Chapter 8 -- Collective Marks.Collective Marks.ß (Covers section 61 to section 68)

ßßChapter 9Chapter 9--Certification Trade Marks.Certification Trade Marks.ß (Covers section 69 to section 78)

ßßChapter 10 Chapter 10 -- Special Provisions for Textile Goods.Special Provisions for Textile Goods.ß (Covers section 79 to section 82)

ßßChapter 11Chapter 11--Appellate Board.Appellate Board.ß (Covers section 83 to section 100)

ßßChapter 12 Chapter 12 -- Offences, Penalties and Procedure.Offences, Penalties and Procedure.ß (Covers section 101 to section 121)

ßßChapter 13 Chapter 13 –– Miscellaneous.Miscellaneous.ß (Covers section 122 to section 159)ß (Covers section 122 to section 159)

TYPES OF TRADEMARKSßThere are basically four types of trademarks

they are

ß ServiceService MarkMarkßßCollectiveCollective MarkMarkßßCollectiveCollective MarkMarkßßCertificationCertification MarkMarkßßWellWell knownknown trademarkstrademarks

ßAll these types of Trademarks are equallyimportant and promote activity as well asmaintain the distinctiveness of the product.

SERVICE MARKSßA service Mark is any word, name, symbol, device, or

any combination used or intended to be used incommerce to identify and distinguish the services of oneprovider by others and to indicate the source of services, it may be called “service mark”.

ßßSectionSection 22 ((11)) (z)(z) ofof TMTM ActAct ofof 19991999..ßßSectionSection 22 ((11)) (z)(z) ofof TMTM ActAct ofof 19991999..ß It means service of any description that is made

available to any potential users and includes theprovision of service in connection with business of anyindustrial or commercial matters such as banking,communications, education, financing, insurance, chitfunds, real estate, transport, storage, materialtreatment, processing, supply of electrical or otherenergy, boarding, loading’ entertainment’ amusement,construction, repair, conveying of news or informationand advertising.

ß It is basically useful in distinguishing one serviceprovider from the other. Service Marks do not coverphysical goods but only the provision of services.Service marks are used to identify a service. someexamples of them are:-

ßßManagementManagement andand investmentinvestment servicesservicesßßhousinghousing developmentdevelopment servicesservicesßßAdvertising,Advertising, sponsorship,sponsorship, PromotionalPromotional servicesservices..ßßallall typestypes ofof consultancyconsultancy && ProfessionalProfessional servicesservices..ßßHotelHotel andand motelmotel servicesservices ..ßEntertainment services rendered by individual , group

or theatre.ßThat it can play a crucial role in marketing, promoting

and sales of a product or service, it also plays the roleof referring to a particular quality or standard forwhich the service mark is used.

Collective Mark

ßßSectionSection 22((11)) (g)(g) ofof TMTM ActAct ofof 19991999ß “A Trade mark distinguishing the goods or services

of members of an association of persons not beingpartnership firm from those of others”

ßA collective mark is utilised for goods and serviceswith same characteristics which are to be traded bywith same characteristics which are to be traded byone or more person acting jointly or legal entity fordifferentiation with other goods or services of samekind. Examples of collective trade marks include

ßThe "CA"CA" device used by the Institute of Chartered Accountants.

ßßThe mark "CPA", The mark "CPA", used to indicate members of the Society of Certified Public Accountants.

CERTIFICATION MARK ßßSectionSection 22 ((11)) (e)(e) ofof TMTM ActAct ofof 19991999.. There is a

species of trade mark called as Certification Trademark. Its function is to indicate that the proprietor ofthe mark has certified the goods bearing the mark asto certain characteristics of the goods.

A certification mark indicates that the goods orservices in connection with which it is used arecertified by the proprietor of the mark in respect ofcertified by the proprietor of the mark in respect oforigin, material, and mode of manufacture of goods orperformance of services, quality, accuracy, or othercharacteristics.An important requirement for registration ofcertification mark is that entity which applies forregistration is “competent to certify” the productsconcerned. Thus owner of certification mark must berepresentative of products to which certification mark.e.g. Geographical origin, ingredients and so on suchas ISI,ISI, AGMARK,AGMARK, FPOFPO

WELL KNOWN TRADE MARKSßßSection 2(1) (Section 2(1) (zgzg)) of TM Act of 1999. of TM Act of 1999.

Well known trade mark in relation to any goods orservices, means a mark which has become so to thesubstantial segment of the public which uses suchgoods or receives such services that the use of suchmark in relation to other goods or services would belikely to be taken as indicating a connection in thelikely to be taken as indicating a connection in thecourse of trade or rendering of services betweenthose goods or services and a person using the markin relation to the first-mentioned goods or services.

Example: TATA,TATA, CocoCoco Cola,Cola, FrootiFrooti,, BataBata enjoys anunparalleled reputation and goodwill and hasacquired the status of a "well"well known"known" trademark.

Few Trademarks & Service Marks

GROUNDS OF REFUSALßSections 9- 17 of Trademark Act of 1999, deal with

the conditions, under which a Trade Mark can berefused registration.

ß If an application for the registration of a Trade Markdenotes any of the characteristics, mentioned underthe following categories, it will not be registered as aTrade Mark. These are the most important sections,which need to be considered for registering a mark.which need to be considered for registering a mark.

ßThe Absolute Grounds (section 9)ßThe Relative Grounds (section 11).ßBased on an understanding of these grounds, the

following marks may not be able to get registrationunder the Trade Marks Act:

ßA Mark which is devoid of any distinctive character (which is incapable of distinguishing the goods orservices of one person from that of another),

ßA Mark which is likely to deceive or cause confusion,ßA Mark which is contrary to any law for the time being

in force,ßA Mark which is phonetically similar to any existing

registered mark,ßA Mark which is deceptively similar to any existing

registered mark,ßA Mark which is identical to any existing registeredßA Mark which is identical to any existing registered

mark,ßA Mark which contains scandalous /obscene matter,ßA Mark which is likely to hurt the religious sentiments

of a particular class of the society,ßA Mark which is disentitled to protection in court, andßA Mark whose use is prohibited under the Emblems

and names (Prevention of Improper Use) Act, 1950.

PROCEDURE FOR AND DURATION OF REGISTRATION

ßSection 18 -Application for registration.

ßEvery application under sub-section (1) shall be filed in theoffice of the Trade Marks Registry within whose territoriallimits the principal place of business in India of the applicantor in the case of joint applicants the principal place ofbusiness in India of the applicant whose name is firstbusiness in India of the applicant whose name is firstmentioned in the application as having a place of business inIndia, is situate.

ß19. Withdrawal of acceptance

ßWhere, after the acceptance of an application for registrationof a trade mark but before

ß its registration, the Registrar is satisfied –

ß (a) that the application has been accepted in error; or

ß (b) that in the circumstances of the case the trade markshould not be registered. Or should be registered subject toconditions or limitations or to conditions additional to ordifferent from the conditions or limitations subject to which theapplication has been accepted, the Registrar may, afterhearing the applicant if he so desires, withdraw theacceptance and proceed as if the application had not beenaccepted.]

ß20. Advertisement of applicationß20. Advertisement of application

ß (1) When an application for registration of a trade mark hasbeen accepted, whether absolutely or subject to conditions orlimitations, the Registrar shall, as soon as may be afteracceptance, cause the application as accepted together withthe conditions or limitations, if any, subject to which it hasbeen accepted, to be advertised in the prescribed manner:

Section 21. Opposition to registration(1) Any person may, within three months from the date

of the advertisement or re-advertisement of anapplication for registration or within such furtherperiod, not exceeding one month in the aggregate, asthe Registrar, on application made to him in theprescribed manner and on payment of the prescribedfee, allows, give notice in writing in the prescribedmanner to the Registrar, of opposition to themanner to the Registrar, of opposition to theregistration.(2) The Registrar shall serve a copy of the notice onthe applicant for registration and, within two monthsfrom the receipt by the applicant of such copy of thenotice of opposition, the applicant shall send to theRegistrar in the prescribed counterstatement of thegrounds on which he relies for his application, and ifhe does not do so he shall be deemed to haveabandoned his application.

Section 25. Duration, renewal, removal and restoration of registration

ß (1) The registration of a trade mark, after thecommencement of this Act, shall be for a period often years, but may be renewed from time to time inaccordance with the provisions of this section.

ß (2) The Registrar shall, on application made bythe registered proprietor of a trade mark in thethe registered proprietor of a trade mark in theprescribed manner and within the prescribed periodand subject to payment of the prescribed fee, renewthe registration of the trade mark for a period of tenyears from the date of expiration of the originalregistration or of the last renewal of registration, asthe case may be (which date is in this sectionreferred to as the expiration of the last registration).

Section 25. Duration, renewal, removal and restoration of registration

ßWhere a trade mark has been removed from theregister for non-payment of the prescribed fee, theRegistrar shall, after six months and within one yearfrom the expiration of the last registration of thetrade mark, on receipt of an application in theprescribed form and on payment of the prescribedprescribed form and on payment of the prescribedfee, if satisfied that it is just so to do, restore thetrade mark to the register and renew the registrationof the trade mark either generally or subject to suchconditions or limitations as he thinks fit to impose,for a period of ten years from the expiration of thelast registration.

Removal of trademark section 25(3)

ß (3) At the prescribed time before the expirationof the last registration of a trade mark theRegistrar shall send notice in the prescribedmanner to the registered proprietor of the dateof expiration and the conditions as to paymentof expiration and the conditions as to paymentof fees and otherwise upon which a renewal ofregistration may be obtained, and, if at theexpiration of the time prescribed in that behalfthose conditions have not been duly compliedwith the Registrar may remove the trade markfrom the register:

PROPERTY MARKS

ßßSectionSection 479479 ofof IndianIndian PenalPenal Code,Code, 18601860 providesprovidesthatthat “A“A markmark usedused forfor denotingdenoting thatthat moveablemoveablepropertyproperty belongsbelongs toto aa particularparticular personperson isis calledcalled aapropertyproperty markmark..””

ßßTheThe distinctiondistinction betweenbetween ‘trade‘trade mark’mark’ andand ‘property‘propertyßßTheThe distinctiondistinction betweenbetween ‘trade‘trade mark’mark’ andand ‘property‘propertymark’mark’ isis notnot recognizedrecognized inin EnglishEnglish LawLaw..

ßßHoweverHowever inin India,India, thethe distinctiondistinction betweenbetween aa ‘trade‘trademark’mark’ andand aa ‘property‘property mark’mark’ isis asas followsfollows::

Distinction between property mark and Trademark

Trade Mark Property Mark

It denotes manufacture or quality of the goods to which it is attached

It denotes the ownership of them

which it is attached

It concerns the goods themselves

It concerns the proprietor of the goods

Distinctive MarkDistinctive (unique) and not descriptive for the type of product or service being registered but if descriptive, it can be registered only if sufficient evidence of use is presented - acquired distinctiveness

¡ Distinctive marks identify goods or services asoriginating from a particular company, andconsequently distinguish those goods or services fromcompetitors’ goods or services.competitors’ goods or services.

¡ Have little or no descriptive function; Operateprimarily to identify a product source.

¡ Inherently distinctive: Marks that are unique (madeup) or very original.

¡ Secondary Meaning: Marks that become distinctivedue to TM owner’s efforts to create distinctiveness(long-term use & public recognition)

DESCRIPTIVENESS DISTINCTIVENESS

CHEESE FROM DENMARK

TENNISSHOES ADIDAS TENNISSHOES

Distinctive Yes No

ßWord SUPPER

ßLogo

Super

ßLogo

ßWord/Logo

Descriptive Trade MarksThe trademark, which consist exclusively of signs orindications which may serve, in trade, to designate thekind, quality, intended purpose, value, geographicalorigin, the time of production of goods or of renderingof services, or other characteristics of goods or servicesIt Describe some quality or characteristic of goods orIt Describe some quality or characteristic of goods orservices in descriptive terms like:

¡ SWEET to sell chocolates.¡ “Apple” brand apple juice¡ “ORWOOLA” or “Pure whool” for 100% for wool

materials.¡ “The Band” Not protected unless “secondary

meaning” acquired

DESCRIPTIVENESS DISTINCTIVENESS

CHEESE FROM DENMARK

TENNISSHOES ADIDAS TENNISSHOES

TYPES OF TRADEMARKSßCoined or Invented Trademarks:

ßThese Trademarks are meaningless trademarks whichenjoys highest amount of legal protection e.g. KODAK,RANBAXY, DABUR.

ß These marks also includes common words but arbitrary inconnection with the products or services e.g. TORTOISE forMosquito coil, CAMEL for Cigarettes, APPLE for Computers,Mosquito coil, CAMEL for Cigarettes, APPLE for Computers,OMEGA for watch.

ß Suggestive or Semi-descriptive Trademarks:

These Trademarks are always preferred by Marketingpeople as it creates association with the product withoutbeing descriptive. These Trademarks are easilyremembered and easy to promote than coined or inventedmarks. Suggestive marks also includes plain dictionarywords e.g. SWATCH, TITAN, RELIANCE, INFO GATE,CYBERSURFER, HEAD & SHOULDER

ßDescriptive Trademarks:

ß Marketing people are mostly keen on finding the name, whichcommunicates product associations to consumers. But no or minimalprotection is granted by the law to such trademarks unless it is beingused extensively and continuously for many years with huge sale andadvertising to popularize the same. Examples of Descriptive marks areRAPID RICE, SWISS CHOCOLATE, LITE FOR BEER, EASY CASH,ANY TIME MONEY, HAIR & CARE, FAIR & LOVELY,

ßHouse Marks:ß A Trade Name or House mark is a mark to identify a Company or aß A Trade Name or House mark is a mark to identify a Company or a

business and serves as the name of the Company or a business. Manytimes, a Group of Companies use its house mark on its products orservices along with or without any other Trademark e.g . GODREJ’sJUMPIN and GODREJ STOREWELL, TATA TEA, TATA SALT, TATAPRESS, NESTLE’s NESTEA, NESTLE’s MILO, BAJAJ SCOOTER,BAJAJ MAJESTIC for Toaster, BIRLA WHITE Cement, BRITANNIAGOODDAY, BRITANNIA CREAM TREAT, AMUL CHEESE, DABURHONEY.

ßFigurative Trademarks: ß Each of the above mark may be combined with figurative

elements or marks. It is also possible to use a figurative mark inisolation. Such figurative elements are added or used exclusivelyfor different markets where there is communication problem i.edifferent languages are used in different markets.

ß The Figurative marks can also be like word marks of followingtypes:

ß Meaningless, fancy or pure fantasy marksßArbitrary or marks without any relevance with the product (half

bitten apple for APPLE Computers, ARROW for Shirts)ßSuggestive (Cow for MILKMAID), TWO ELEPHANTS pulling a

chain in opposite side joined with FEVICOL)ßDescriptive (device or picture of Wheat for Bread, device of hand

showing No. 1 for McDowell’s No. 1 Whisky, Running Deerthrough letter “S” for Savani Transports)

ß For its distinctiveness full legal protection is granted to suchfigurative marks.

AA generic Trademarkgeneric Trademark

ß Brand names become generic when they are so commonlyused that people associate the brand name for every productof that type regardless of who manufacturers it, or whotrademarked the name. The trademark becomes synonymouswith a product. And while you would want your product tobecome that well known, a trademark can lose the right toregistration and protection if it becomes generic. Did you thatregistration and protection if it becomes generic. Did you thatin Austria Sony lost its trademark registration forthe walkman? Here are a few examples of genericizedtrademarks.

ßThrough this PPT we’ve included images of once trademarked brand names that have become generic, either officially or in practice. Did you recognize them? The Yo-Yo, the Escalator, the Zipper, the Band-Aid and the Kleenex have all gone the way of the generic.

ßThese are actually not a Trademark but generic, chemical oringredient’s original name. However, some of theTrademarks which are used generically and hence becamegeneric and not protected as a Trademark.

ß ASPIRIN,

ß THERMOS,

ßKEROSENE

ßESCALATOR,

ßGRIPE WATER,ßGRIPE WATER,

ß REFRIGERATOR

ßDALDA

ß were Trademarks but due to its general and descriptive useby all together with improper protection by its owners madethem generic words. Today, many companies are facingdilution of their Trademarks due to its general use such asXEROX for photocopies, VELCRO for fasteners etc.

ßsometimes the power of the masses overrules the power oflaw. Take the word “escalator,” a brand name originallytrademarked by the Otis Elevator Company. Soon, peoplestarted using the word “escalator” to refer to all movingstairs, not just Escalator-brand moving stairs. This improperusage eventually became so common that the U.S. courtdeclared the term “generic.” Now, any company thatproduces moving stairs may call their product an “escalator.”

GenericsßDixie Cups CellophaneßCorn Flakes Dry IceßLanolin MimeographßMonopoly Pogo StickßRaisin Bran Shredded WheatßThermos Toll HouseßThermos Toll HouseßTrampoline FrisbeeßHi-Liter Kitty LitterßKleenex Magic MarkerßPing-Pong PopsicleßScotch Tape SheetrockßTV Dinners Wiffle Ball

Deceptively Similar / Identical Markß If it concerns the same or similar/identical

products and services: The name of product /service cannot be similar or identical to aprevious mark Meaning the way the mark is:Written, Looks, Phonetic (sounding), Conceptualsimilarity, however The same similar / identicalbrand name can be used for differentproducts/services in different classes.products/services in different classes.

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Deceptively Similar / Identical - Examples

ßWritten

ßLooks

Cool / Kool

ßSounding

ßConceptual Star / Stern

Basket / BuskitFor You / 4 U

VIVO AND TIVO

The Concept of Unfair Competition ßThe law of unfair competition is primarily comprised of

torts that cause an economic injury to a businessthrough a deceptive or wrongful business practice.Unfair competition can be broken down into two broadcategories. First, the term "unfair competition" issometimes used to refer only to those torts that aremeant to confuse consumers as to the source of themeant to confuse consumers as to the source of theproduct. The other category, "unfair trade practices",comprises all other forms of unfair competition.

ßUnfair competition does not refer to the economicharms involving monopolies and antitrust legislation.What constitutes an "unfair" act varies with the contextof the business, the action being examined, and thefacts of the individual case.

ßUnfair competition can be broken down into two broadcategories. First, the term "unfair competition" issometimes used to refer only to those torts that aremeant to confuse consumers as to the source of theproduct. The other category, "unfair trade practices",comprises all other forms of unfair competition.

ß that fall into the area of unfair competition include:ß that fall into the area of unfair competition include:false advertising, "bait and switch" selling tactics,unauthorized substitution of one brand of goods foranother, use of confidential information by formeremployee to solicit customers, theft of trade secrets,breach of a restrictive covenant, trade libel, and falserepresentation of products or services.

Methods of unfair competitionßOur judiciary has continually enlarge the definition of

unfair competition and the methods of unfaircompetition, which are as varied as they areingenious and are not limited to palming off; itincludes not only

ß infringement of trademarks, service marks and tradenames,names,

ßsimulation of a product or its packaging, palming offby unauthorized substitution, and use of similar titlesof artistic works,

ßdilution of trade symbols,ßmisappropriation of distinctive literary and

entertainment characterizations, misappropriation ofthe right of publicity and other business values, falseadvertising and other false representations.

Trademark infringementßThe trademark infringement case is the likelihood of

confusion �that is, the alleged infringer will beprohibited from using a trademark on a competingproduct if that use causes a likelihood of confusionin the mind of a relevant purchaser.

ßThe Courts have set forth a number of factors fordetermining the likelihood of confusion, such as thedetermining the likelihood of confusion, such as thecloseness of the appearance, sound, and meaningof the conflicting marks; the relatedness of thegoods on which the marks are used; the channelsof commerce in which the marks are sold; and thesophistication of the relevant purchasers of thegoods. Thus, in analyzing any trademarkinfringement situation, all of these factors as wellas other relevant factors not mentioned must beconsidered.

PASSING OFFßPassing off is a wrong, a common law tort which

protects the goodwill of a trader frommisrepresentation. Misleading the public into believingfalsely, that the brand being projected was the sameas a well known brand is a wrong and is known as thetort of “passing off” .

ßThough the trademark of whirl pool corporation wasnot registered in India, as it was removed from thenot registered in India, as it was removed from thetrademark register for non use / non renewal.

ßAs held in the famous case of N. R. Dongre Vs.Whirlpool Corporation “A man may not sell his owngoods under the pretence that they are the goods ofanother man.” Law aims to protect traders from thisform of unfair competition.

Civil remedies for Protection of Trademark In case of Infringement In case of Passing off

Statutory remedy available for aregistered proprietor againstviolation of his exclusive right touse the trade mark;

Common law remedy against aperson of passing off his owngoods as those of another & en-cashing on other’s goodwill;

Mere confusion is enough forgetting interim and final relief.

Actual deception has to beproved for getting any relief.

Trade Mark registration is prima Evidence showing longTrade Mark registration is primafacie proof of ownership of themark.

Evidence showing longcontinuous use of the brandneeds to be led thereby showingprior adoption, use then infringer

Registered owner can initiateaction in a Court , where the ownerresides or carries it’s business orwhere cause of action arose.

Passing Off action can beinitiated, where the Defendantcarries on its business or wherecause of action arose.

infringement is actionable per se,owner need not to prove specificmonetary damage in case of theinfringement

Owner of the unregistered brandhas to prove actual monetarydamages because of its wrongfuladoption.

Palming offßThe Palming off is considered to be a species of unfair

trade and competition or of actionable unfair tradingby which one person, through deception attempts toobtain an economic benefit of reputation, whichanother has established, for himself in a particulartrade or business, for instance, Warner Ltd. v. AntoxIndia Pvt. Ltd., 1990 Suppl. SCC 727.India Pvt. Ltd., 1990 Suppl. SCC 727.

ßThe touchstone in any action of unfair competition intrademarks is the likelihood of confusion about theorigin of product.

ßUnfair competition when used in connection withpalming off, is understood to mean the result of thedefendant’s act, i.e. deception of the public, rather

than his intent.

Public is considered deceived, when a seller uses atrademark on a competing product and that use causesa likelihood of confusion in the minds of a relevantpurchaser.The spectrum of palming off has been consistentlybroadened and it includes at least three situations;they are

(1) substitution of one brand of goods when anotherbrand is ordered;brand is ordered;

(2)trademark infringement where the infringerintentionally meant to defraud and confuse buyers; and

(3)trademark infringement where there is no proof offraudulent intent, but there is a likelihood of confusionof buyers.palming off essentially requires an intent to deceiveand actual fraud

Trademark dilution as unfair competition

ßAnother main area of unfair competition in trademarkinfringement is trademark dilution, which can happeneither by blurring or tarnishment.

ßBlurring of trademark occurs when the trademark isused with a number of goods and service notused with a number of goods and service notcontrolled by original owner, by which it looses itsdistinctiveness in the market.

ßThe Tarnishment occurs when the other partyattaches the trademark with an activity that bringsdisrepute to the trademark. For example, using a colddrink trademark for a "playboy" magazine.

DamagesDamagesßThis damage can occur in two different ways. The first

is a blurring of the distinctiveness of the mark. Ifconsumers see the mark being used on a number ofdifferent goods and services not controlled by theoriginal owner, the original owner’s mark will lose“cachet” or distinctiveness. In some cases thelikelihood of confusion is not present, but there is stilldamage done to a recognized mark by a seconddamage done to a recognized mark by a secondseller’s unfair use of it.

ß The second damage to the mark is by tarnishment. Inthis case, the original mark is used in such a way thatthe consumer knows, because of the context or theusage, that there is no connection between theowners of the respective marks. However, use of themark by the other party brings the trademark owner’smark into disrepute or shows the trademark in a badlight.

Remedies for infringement and unfair competition

ßRemedies in the case of trademark infringement andunfair competition include injunction, imprisonmentup to three years, fine to a maximum two lakh IndianRupees, damages, rendition of account of profit andcancellation of registration of trademark.

ßRemedy for unfair competition is generally inßRemedy for unfair competition is generally inconjunction with remedy for trademark infringement.However, an order as to non-infringement oftrademark does not necessarily mean dismissal of asuit for unfair competition as held in Frito-Lay India v.Guru Pasad Enerprises, 2004(29) PTC 537(Del).

ßSeeking a remedy for unfair competition along withremedies for trademark infringement and passing offcan certainly strengthen a case.

ß

Trade NamesTrade NamesßTrade names are not marks. A trade name is a word,

name, term, symbol, or combination of these, usedto identify a business and its goodwill. Whereas, amark identifies the goods or services of a company, atrade name identifies the company itself.

ßTrade names and marks are related. For example, ifone business adopts a trade name similar to a markused by another, the trade name of the first businessused by another, the trade name of the first businessmay impede the effectiveness of the mark used bythe second in identifying the source or origin ofgoods or services.

ßConsumers may come to believe that the firstbusiness makes goods, or provides services, sold bythe second. For this reason, conflicts can arisebetween trade names and marks.

ßTrade names also can function as marks. Manycompanies use all or part of their business names asmarks on their products, or in connection with theirservices.

ßWhen a trade name is used by a company in this dualfashion, it becomes even more important thatcompeting companies refrain from using a similartrade name or mark.

Comparison of Trade Names & TrademarksLaws Trade Names Trade Marks & service

marks

Protection Law Commercial Laws Trademark Law

Function To distinguish traders(companies)

To distinguish goodsand services

Composition Composition Characters Name,

Composition Characters, figures, signs, etc.Name, figures, signs, etc.

Protectionperiod

Indefinite Ten years & renewals

Scope ofright

Within the same city,town, as designated bythe law

Same right throughout India

TRADE DRESSß It is pertinent to discuss in brief about the Trade Dress. Trade

Dress is the overall appearance of the goods or their packagingor of advertising or the means for delivering goods or services.For Example a restaurant’s name or logo will constitute as aTrademark while its style, furnishing and ornamentation ofrestaurant premises identify the restaurant’s services, whichconstitute Trade Dress (e.g. McDONALD’S restaurant chain).Even the shape, size and graphic design of packaging includingits internal and external configuration will constitute a TradeDress (MAGGI in a typical yellow and red colours).Dress (MAGGI in a typical yellow and red colours).

ß Trade Dress like a Trademark, is protectable if it is distinctivei.e. it distinguishes the owner’s goods, services or businessfrom those of other. Inventive, arbitrary or suggestive featuresor combination of any its features will make the Trade Dressdistinctive. However, in some cases Trade Dress may beinherently distinctive. Inherently distinctive Trade Dress usuallyrefers to “Product packaging Trade Dress that serves toimmediately single out a brand or product source”. Otherwise,the Trade Dress is to be made distinctive by extensivemarketing and use.

INTELLECTUAL PROPERTY APPELLATE BOARD

ßThe Intellectual Property Appellate Board wasestablished on 15th September 2003, under the TradeMarks Act 1999 and became functional in December2003.

ßThe primary purpose of establishment of the IPAB is toprovide an appellate forum to expeditiously adjudicateprovide an appellate forum to expeditiously adjudicateupon appeals from the orders or decisions passed bythe Registrar of Trade marks & GeographicalIndications as well as the Controller of Patents.

ßThe IPAB has also been conferred the originaljurisdiction in regard to rectification applications in itsoriginal jurisdiction. As of now the IPAB has beenhearing appeals from the orders passed by theRegistrar of Trade Marks only.

CitationsßThe test laid down by the Supreme court is a person of

average intelligence with imperfect memory –Amritdhara case AIR 1963 SC 449. This test is followed by the Supreme Court and by various High Courts all over India.

ßThe test laid down by the SC is overall impression /ßThe test laid down by the SC is overall impression /Comparison of the two marks. A side by side, word, byword comparison is not permitted. In the Parle case AIR1972 SC 1359 the marks involved were Gluco biscuitswrapper and the defendant using similar wrapperalthough there were minor differences like the Basketbeing held differently, the background, etc. Still the courtgranted injunction in view of the over all similarity of themarks.

ßThe Court does not consider / ignores commonly usedprefixes or suffixes. The SC held in Ruston & Hornby case– AIR 1970 SC 1649 that the trademarks RUSTON andRUSTOM INDIA are similar. The Court held that the suffixIndia has no significance.The marks RUSTON andRUSTOM are phonetically and visually similar.

ß In Hoffman La Roche case AIR 1970 SC 2062, theSupreme Court held that the suffix VIT means vitaminand held that the suffix is common to Pharmaceuticaltrade. The plaintiff could prove that there were more than58 registrations of trademarks in class 5 having the suffixVIT. The court held that the trademarks PROTOVIT andDROPOVIT are not similar.

passing off

ß In a passing off suit filed by a company having internationalreputation, the mark being a well-known trademark, injunction hasbeen granted even wherein the goods are different.

ß Daimler Benz Vs. Hibo Hindustan AIR 1994 DEL 239 – Injunctionwas granted in a suit filed by Daimler Benz, manufacturers offamous Benz cars filed a suit against Hindustan Hibo,manufacturers of well known VIP underwear against use of trademanufacturers of well known VIP underwear against use of trademark BENZ and device of a man with folded arms and spread legswhich looks like a three pointed star used by Benz. Interiminjunction was granted restraining Hindustan Hibo from using thetrademark BENZ and device looking like a three-pointed star inrespect of undergarments.

Passing offßWhere the marks are different, but the colour

scheme, get up and layout are identical, injunctionhas been granted in a suit for passing off.

ßCastrol Vs. Pentagon Lubricants – C.S. No. 327 of 1999 – Order of Mr. Justice A. Ramamurthi dated 1999 – Order of Mr. Justice A. Ramamurthi dated 22.12.1999. The Learned Judge observed that in view of the colour scheme, packing being identical, an ordinary person would assume that the defendants’ goods also emanate from Castrol.

ßComposition of IPAB: Every bench comprises of aJudicial member & a Technical member.

ßAppeals to IPAB: An order may be appealed beforethe IPAB within a period of three months from thedate of such order. The law also allows condonationof delay.

ßRules & Procedures: The Code of Civil Procedure isßRules & Procedures: The Code of Civil Procedure isnot applicable to the proceedings before IPAB. TheIPAB has been vested with the powers to make itsown rules for conduct of proceedings.

ßThe orders, passed by the IPAB, are subject toappeal before the High Court.

TM Registration certificate

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