A trademark is any sign that individualizes the goods of a given enterprise and distinguishes them

from the goods of its competitors. This definition comprises two aspects, which are sometimes
referred to as the different functions of the trademark, but· which are, however, interdependent and
for all practical purposes should always be looked at together: In order to individualize a product for
the consumer, the trademark must indicate its source.

This does not mean that it must inform the consumer of the actual person who has manufactured the
product or even the one who is trading in it: the consumer in fact often does not know the name of the
manufacturer, still less the geographical location of the factory in which the product was made. This is
not necessary for the trademark to fulfil its purpose of indicating origin. It is sufficient that the
consumer can trust in a given enterprise, not necessarily known to him, being responsible for the
product sold under the trademark.

Section 2(zb) of trademark act, 1999 defines trademark as

A mark capable of being represented graphically and which is capable of distinguishing the goods/ services of
one person from those of others;
• A mark can include a device, brand, heading, label, ticket, name, signature, word, letter, and numeral,
shape of goods, packaging or combination of colours or any such combinations.

• Besides these unconventional Trademarks as follows may also be applied for registration:
1) Colour trademark 3) Holograms
2) Sound Trademarks 4) Three Dimensional marks

OBJECTIVE:

Trade Mark being an instrument to advance such cause of one’s own trade, its protection from
unauthorized uses is necessary to ensure the protection of rightful owner of a trademark from
fraudulent, deceptive and criminal minded individual. Furthermore, a larger public interest can only be
served if quality of products and services is protected from deterioration. Such deterioration is always
caused by the duplicity of famous and popular product and services by unauthorized users and also
due to the inability of an original proprietor to maintain the quality due to loss, in terms of money,
reputation and trust of public; caused by the availability of duplicate products in the market. So to
protect fundamental, constitutional and civil rights of persons and in furtherance of public interest
Trade Marks law has been enacted.

FUNCTIONS OF TRADEMARK:

Under modern business conditions a trade mark performs four functions:-

 It identifies the product and its origin
 it guarantees its unchanged quality
 It advertises the product
 It creates an image for the product.
THE ATTRIBUTES OF GOOD TRADEMARK:-
 It should be easy to pronounce and remember, if the mark is a word.

 In the case of device mark it should be capable of being described by single word.

 It must be easy to spell correctly and write legible.

 It should not be descriptive but maybe suggestive of quality of goods and satisfy requirements
of registration.

TYPES OF TRADEMARK:

Product Mark: It is used to identify the source of a product and to distinguish a manufacturer’s
products from others. Product marks are those that are attached to distinguish the goods or services of
one manufacturer from that of another

E.G:

Service Mark: A service mark is nothing but a mark that distinguishes the services of one
proprietor/owner from that of another. Service marks do not represent goods, but the services offered
by the company.

E.G:

Collective Mark: These used by a group of companies and can be protected by the group collectively.
Collective marks are used to inform the public about a particular characteristic of the product for which
the collective mark is used. The owner of such marks may be an association or public institution or it
may be cooperative. Collective marks are also used to promote particular products which have certain
characteristics specific to the producer in a given field.

E.G:
Certification Mark: It is a sign indicating that the goods/services are certified by the owner of the sign
in terms of origin, material, quality, accuracy or other characteristics. This differs from a standard
trademark whose function is to distinguish the goods/services that originate from a single company. In
short, certification marks are used to define the standard. They guarantee the consumers that the
product meets certain prescribed standards.

E.G

Shape marks: Shape Mark has facilitated promotion of products and emerged into the trademark type
after the technological advancement of graphics. Any graphical representation which is able to make a
difference amongst the products can be shape marked.

E.G

Sound Mark: Sometimes, the sound that plays in the advertisement becomes so well known that when
people hear it they immediately know what product/service it refers to. In such cases, the sound may
be regarded as a trademark and is eligible for registration. A sound mark is a trademark where a
particular sound does the function of uniquely identifying the origin of a product or a service.

E.G

GROUNDS FOR REFUSAL

During the process of registration, trademark is examined for absolute grounds for refusal. Any sign
which is not able to distinguish the goods and services cannot be registered, and this is one of the
reasons for refusal of registration.
The law does not recognize every possible symbol as a valid trademark. A registrable mark
must satisfy three criteria:
• It must be a “trade mark” It must not fail on the absolute ground and
• It must not fail on the relative ground.
Absolute grounds of refusal prevent registration prima facie.
Relative grounds for refusal deal with the mark in connection to other marks.

Absolute grounds for refusal of trademark

 Sign may be refused for absolute ground if there is lack of distinctiveness, descriptiveness,
and generic. The absolute ground for refusal prevent, in general, marks that are purely
descriptive, functional or objectionable for being registered.

 The marks Which designate kind, quality, quantity, intended purpose, values, geographical
origin or time of production of goods of rendering of services or other characteristics of goods
or services.

 Which have become customary in the current language or in the bona fide and established
practices of the trade

 If it contains scandalous and obscene material or hurts the religious sentiments of people.

 If the shape of goods is needed to obtain technical result or add substantive value to good.

Section 9(1): of TMA prohibits registration of marks:-

 Which are devoid of distinctiveness and incapable of distinguishing goods or serves from
others 9(1) (a)

 Which designate kind, quality, quantity, intended purpose, values, geographical origin or time
of production of goods of rendering of services or other characteristics of goods or services
9(1) (b)

 Which have become customary in the current language or in the bona fide and established
practices of the trade 9(1) (c)
Unless the mark has acquired distinctiveness or is a well-known mark before the date of application
for registration.

Section 9(2): A mark shall not be registered as a trademark if:-

 It deceives the public or causes confusion;

 It contains or comprises of any matter likely to hurt the religious susceptibilities of any
class/section of the citizens;

 It comprises or contains scandalous or obscene matter;

 Its use is prohibited under the Names (preventions of improper use) act 1950.
Section 9(3): PROHIBITED SHAPES: A mark shall not be registered as a trade mark if it consists
exclusively of:-
 The shape of goods which results from the nature of the goods themselves; or

 The shape of goods which is necessary to obtain a technical result; or

 The shape which gives substantial value to the goods.

Distinctiveness: Trademark distinctiveness refers to the features of a registered design that identify
products or services as originating from a specific company.
The 1999 act by avoiding the expression like ‘distinctive character’ in the mark which means ‘capable
of distinguishing’. A simpler approach was adopted in 1999 act for registration.
Parson Bros. & Co v. John Gillespie & co:
It was held that “FLAKED OATMEAL” must be shown by plaintiff not to be a part of the common stock
of language or the plaintiff must show that the term being originally descriptive of the articles has now
come to denote the goods made by the plaintiff. The mark must be distinctive. It must show the
source or the goods to the customer. Words like ‘Best’ etc. are not distinctive but only descriptive.

Descriptive: Descriptive marks are those trademarks or service marks that only describe the
products or services to which they are applied. Marks that are merely descriptive are not protected or
accorded trademark rights. This is because they do not identify and distinguish the source of products
or services. Marks that are mis-descriptive are also not protected.
Descriptive marks can be confused with suggestive marks, which do receive moderately strong
protection. The difference is that suggestive marks require imagination, thought, or perception to
determine the nature or quality of the goods, whereas descriptive marks allow someone to draw those
conclusions without putting any effort into it.

EVERGREEN SWEET HOUSE v EVER GREEN & Ors:

held that the trademark EVERGREEN is not descriptive or suggestive of the products or services
offered. EVERGREEN does not readily conjure up the image of sweets. The 2 words used in
conjunction with each other naturally lead the mind on to green visa or environment. The mark in
relation to sweets is coined one.

INVENTED WORD
To be an invented word within the ambit of the act a word must be coined in the sense of not being
already current in English language and should not mean anything.
F. Hoffman-La Roche & Co Ltd v. Geoffrey Manner & Co. (P) Ltd: held that it I true that the word
‘Dropvit’ is coined out of words commonly used by and known in English language. But the
combination of 2 produces a new word which is an invented word.

GEOGRAPHICAL NAMES
Geographical Indications are similar to trademarks in that they function as source indicators.
However, the key distinction lies in the fact that while a trademark identifies a good or service as
originating from a particular producer, a geographical indication identifies not the producer of the good
concerned, but the geographical region from where the product originates.
The trade mark act 1999 provides that a trade mark which consist exclusively of marls or indications
which may serve in trade to designate the geographical origin of the goods are not registrable.
Hi-Tech Pipes Ltd. vs. Asian Mills Pvt. Ltd.
The question before the Court was whether or not “Gujarat” per se can be used as a trademark or not and
whether the continuous prior user of the mark by the Plaintiff entitles it to an exclusive user and restraint
order against the Defendant.
 The issue that the Hon’ble Court considered was that of passing off.

 Gujarat as a State is not known for its steel pipes and therefore the word “Gujrat” by the
Defendant is not being used as descriptive of the origin of the goods.
 Section 27(1) of the Trade Marks Act, 1999 stipulates that no person shall be entitled to
institute any proceedings to prevent or recover damages of infringement of an unregistered
trade mark; right of action against any person for passing off the goods is not extinguished.
 The sales of the Plaintiff for over 15 years are running into crores under the trade mark
“Gujarat”. The Defendant has entered the industry much later.
 The use of the trade mark “Gujrat” by the Defendant comes under the ambit of passing off
its goods as that of the Plaintiff’s, since by consistent prior use, the mark is associated with
the product of the Plaintiff.
 The Court granted a restraint order stopping the Defendant from using the trade mark
“Gujarat” or “Gujrat”.

PUBLICI JURIS (GENERIC WORDS)

The words which have become Publici Juris or generic cannot be appropriated as they belong to the public
domain. Being public property they are not open for registration as trademark by any individual trader.
“To Deceive” and “To cause confusion” difference:
According to section 9(2) (a), a mark cannot be registered as a trademark if it is of such nature as to deceive
the public or cause confusion.
To deceive means deceiving a person by telling him a lie or making false representation and making him
believe that particular thing is true which is in fact false.
To cause confusion may mean causing confusion without telling a person a lie or making false representation.