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

distinguishes them from the goods of its competitors.

 Exclusive right of the proprietor of the trademark- the owner of a protected
trademark must have the right to prevent competitor from using identical or
confusingly similar trademarks for goods identical or similar to those for which he
uses his own trademark.
 The Paris Convention for the Protection of Industrial Property of March 20, 1893
("the Paris Convention") places contracting countries under the obligation to provide
for a trademark register. Over one hundred states have adhered to the Paris
Convention.
 The first user has priority in a trademark dispute, not the one who first registered
the trademark. This approach has been chosen by the United States of America,
the Philippines, Indonesia and all countries with systems of law on the traditional
British model (Hong Kong, India, Singapore, etc.).
 The United States of America is the only country to have recognized, in a recent
decision, the registrability of a smell mark.
 Practical use requirements-
1. In principle, the trademark must be used in the country of registration.
2. The use must be made in relation to the goods. Normally, the trademark will
be affixed to the goods or to their packaging. In the case of certain goods
(gasoline, etc.) use on accompanying documents or in advertising may be
sufficient.
3. The use must be made publicly, that is, the goods must be offered for sale through
normal trade channels. This does not mean that they must be available
everywhere. It is sufficient if the goods are sold in certain specialty shops, from a
restricted number of outlets or through some special trade channels (for instance
to restaurants in the food service business).
4. Use solely in advertising should be sufficient only if the advertising is for a future
sale and the process of launching the goods on the market has started.
5. The use must be genuine; token use is not sufficient.
6. In order to safeguard the protection of a registered trademark, it must be used for
at least one of the goods for which it is registered. Use for one of the goods for
which the trademark is registered should safeguard protection for all goods on the
 list of registered goods that are similar to the one used.
 The majority of national laws allow the use to be made by the trademark owner
himself or by a third party with his consent. Sometimes such use by third parties is
formalized. The United Kingdom Trademark Act of 1938 and the laws based on it
provide for the registration of a user.
 The basic rule is that the trademark should not be used as, or instead of, the product
designation. When instant coffee, also called soluble coffee, was invented in 1938, the
first product marketed by the company that invented it was called NESCAFE.
However, from the start the company systematically used a product designation such
as "instant coffee" or "soluble coffee" on its labels.
 A second important rule is that trademarks should always be used as true adjectives
and never as nouns, in other words the trademark should not be used with an article,
and the possessive "s" and the plural form should be avoided.
 Trademark law in the United States of America allows the use of a long statement
(such as "Registered with the United States Patent and Trademark Office") to be
replaced by a short symbol, namely, the circled R. Over the years this symbol has
spread throughout the world and become a widely recognized symbol for a registered
trademark. Its use is recommended for egistered trademarks as a warning to
competitors not to engage in any act that would infringe the mark.
 Whether a sign is being used in a trademark sense is a question of fact to be
determined in the light of the specific circumstances of the use. 1 The test is how the
sign would be perceived byb the average consumer of the type of goods on question.2
See also para 14-020.
 To constitute infringement under any head of s.10 of the 1994 act, the mark must be
used in relation to goods or services.3
 Community trade mark- A European Union trade mark or EU trade mark
(abbreviated EUTM; named Community Trade Mark (CTM) until 23 March 2016) is
a trade mark which is pending registration or has been registered in the European
Union as a whole (rather than on a national level within the EU). A
single trademark for the whole European Union. 
Activities which constitutes a sign-

1
Anheuser- Busch, Case C-245/02 at para.61.
2
25, pg-368 ch-14
3
27, pg-368 ch-14
 S. 10(4) specifies that a person uses a sign if in particular he :
1. Affixes it to goods or the packaging thereof;
2. Offers or expose goods for sale, put them on markets or stocks them for those
purposes under the sign, or offers or supplies services under the sign;
3. Imports or exports goods under the sign; or
4. Uses the sign in business papers or in advertising.
 Mere possession of goods bearing an offending sign is not an infringement, unless
there is an intention to deal in them.
 Sec.10 of the 1994 Act defines three different potential categories of infringement in
implementing Art. 5 of the TM Directive:
1. The use of a sign which is identical to the registered trade mark in relation to
goods or services which are identical with those for which the mark is registered.
2. The use of a sign which is identical or similar to the registered trade mark and in
relation to goods or services which are identical or similar to those for which the
mark is registered.
3. The use of a sign which is identical or similar to the registered trade mark and in
relation to any goods or services whether or not they are similar to those for which
the mark is registered.
 If these requirements are satisfied then the statutory protection is absolute in the sense
that the user can’t escape by showing that by something outside the actual mark itself
he has distinguished his goods or services from those of the registered proprietor. If
he uses the mark as a sign and in the course of trade in relation to any of the goods or
services the subject of the registration then there is, prima facie, infringement.
 The registered trade mark must have a reputation in UK. Not necessarily in whole UK
but in substantial part of it.
 The rights of the proprietor have effect from the date of filing of the application for
registration. But no infringement proceedings may be begun before the date on which
the trade mark is in fact registered.
 Trademark rights are territorial. An infringement act committed outside the UK can’t
be sued upon as an infringement of a UK registered trade mark.
 In case of infringement the burden of proof lies upon the claimant, usually the
proprietor of the mark, although in particular circumstances exclusive or even non-
exclusive licensees can bring proceedings, joining the proprietor as co-claimants or
 defendant. The burden of proof lies on the defendant to prove invalidity.
Defences to an action for infringement of a registered trademark
1. The activities complained of were performed with the consent of the proprietor;
2. The use complained of is use in relation to the genuine goods or services;
3. The registration is invalid or liable to be revoked;
4. The defendant has an independent right to use the mark arising from his own
registration;
5. The defendant is using his own name and address;
6. The defendants is using indications concerning the characteristics of his goods and
services;
7. The defendant is indicating the intended purpose of a product or service;
8. The defendant has his own right to use the mark arising from an earlier right;
9. Miscellaneous and general defences.
 Sec.9 of the 1994 Act makes it clear that the exclusive rights in a trade mark are
infringed by the use of the trademark in the UK without the consent of the proprietor.
 If the defendant relies on a specific licence, then the evidential burden may shift onto
him.
 A registration can be attacked in two ways- 1. Through application for its revocation;
2. Application for declaration that is invalid
registration.

 Earlier rights are concerned with unregistered trade marks and signs. To qualify for
protection the use of the defendant’s trade mark or sign must first have been
continuous in relation to the relevant goods or services. Secondly, it must have ben by
a person or a predecessor in title.
 Under s.95 it is a penal offence to describe a trade mark as registered when it is not.
 Passing off is the tort of using the trademarks, trade names and such other
descriptions to pass off one’s own good or services as those originating from the
registered proprietor.
 The rights available against passing off aren’t the same as those against infringement,
since the remedies available in case of passing off are under the umbrella of Common
Law.
 The only test to determine passing off action is whether the goodwill of the owner has
 been affected or not. Passing off is nothing but an encroachment on the goodwill built
by the affected party.
 The few factors that needs to be taken into account while deciding a passing off case
were laid down in the case of Cadila Healthcare Limited v. Cadila Pharmaceuticals
Limited. Supreme Court in the above mentioned case held that, in case of deciding
passing off action in case of deceptively similar marks, the factors that need to be
considered are:
a) The nature of marks, that is both in case of word and label marks
b) The degree of resemblance between the marks, phonetically similar and hence
similar in idea
c) The similarity in nature, character and performance of goods
d) The nature of goods in respect of which they are used as trademarks
e) The mode of purchasing the goods or placing orders for the goods
f) The importance to reputation acquired by a trade name was held in the case of Teju
Singh v. Shanta Devi. The Court held that the goodwill acquired and the reputation
owned by a trade name was important tests to be applied in the case of passing off.

 In case of passing off, no actual deception or any actual damage be proved. It is

enough that the get up of a product is similar to another product and is enough to
cause confusion in the minds of the general public. An element of deceit forms a
strong case of passing off. Though there is no special need to mention deceit or
establish actual deception, but whenever there is a scope for apprehending deception,
the action for passing off is maintainable61 the action for passing off is a common
law remedy unlike infringement action which is a statutory remedy.
 The most valid point of importance is that in the case of an unregistered mark being
infringed, the remedy is passing off whereas a registered owner has the right to claim
an action for infringement.
 To establish this right of action, the claimant must show three elements sometimes
referred to as the ‘classic trinity’ first enunciated in the House of Lords decision of
Reckitt & Colman Products Ltd. v Borden Inc. [1990] 1 WLR 491. (This case is better
known as the Jif Lemon case.) The three elements are:-
(1)The goods or services have acquired goodwill or reputation in the marketplace
that distinguishes such goods or services from competitors;
 (2)The defendant misrepresents his goods or services, either intentionally or
unintentionally, so that the public may have the impression that the offered goods
or services are those of the claimant; and
(3)The claimant may suffer damages because of the misrepresentation.

Madrid system
 There are actually two treaties that govern the “Madrid system” of international
registration of trademarks: (A) the Madrid Agreement Concerning the
International Registration of Marks and (B) the Protocol Relating to the Madrid
Agreement.

 Differences Between the Agreement and the Protocol

1. The Madrid Agreement requires that an international application be
based on a home country registration. Under the Protocol, the applicant may base its
application for international registration on an application filed with the home
country’s trademark office or a registration granted by that office.
2. Critics believed that the 12-month period in the Agreement within which a designated
country could refuse an extension of protection was inadequate given the relatively
extensive and lengthy examination process followed in the United States. Under the
Protocol, however, each Contracting Party may elect a period of 18 months (instead
of months, as in the Agreement) to grant or refuse protection to the mark or notify the
holder of the possibility of refusal.
3. Under the Agreement, the working language is French and all applications filed under
the Agreement must be in French. Under the Protocol, however, the Office of Origin
may require applications made under the Protocol to be filed in English or in French,
or it may permit the applicant to choose one of the two.
4. Under the Agreement, an applicant has less choice over the trademark office in which
it must file: It may only file in a country party to the Agreement in which it has “a real
and effective industrial or commercial establishment.” However, under the Protocol,
the applicant may choose its Office of Origin based on establishment, domicile or
origin.
5. A registration under the Agreement lasts for 20 years before it must be renewed, 30
 while under the Protocol a registration lasts for 10 years before it must be renewed.
6. Under the Agreement, the applicant pays a fixed fee for each designated Contracting
Party. Under the Protocol, however, there may be either a fixed fee or the Contracting
Party may set up its own “individual” fee system in which the national Office may
charge the same fee for any extension of an international registration in its territory
that it would have charged for a national ten-year registration.
 Who May File an International Application?
A natural person or legal entity that (1) is domiciled in a country or territory of an
intergovernmental organization that is party to the Madrid Protocol, (2) is a national
of a country that is party to the Protocol or of a member state of an intergovernmental
organization that is a party, or (3) has a “real and effective industrial or commercial
establishment” in a country or territory of an intergovernmental organization that is
party to the Protocol may file an application for an international registration.

 Filing the International Application: Basic Applications and

Basic Registrations
In order to apply for an international registration, the applicant must file a form at the
national trademark office where the basic application was filed or the basic
registration was granted. The office where trademark applications are filed in a
Contracting Party is called the “Office of Origin.”
 After the international application is filed, the Office of Origin is tasked with
certifying that the mark in the international application is identical to the mark in
the basic application or registration, that the applicant is the same as the owner of
the basic application or registration, and that the goods and services listed in the
international application are the same as or are included in the goods and services
listed in the basic application or registration. It also verifies the date on which it
received the request for the international registration. Then the Office of Origin
will forward the international application to the International Bureau of WIPO.
 International Registration
After receiving the international application, the International Bureau determines
whether the filing requirements are met and whether the listed goods and services are
properly classified. If so, the mark is recorded in WIPO’s International Register as the
subject of an international registration and published in the WIPO Gazette of
International Marks.
 The phrase “international registration” is a misnomer in that it is not a registration
in the same sense as a trademark registration with the USPTO. Instead, the holder
of an international registration gains the right to apply for registration in
Contracting Parties. This right survives even if a designated Contracting Party
refuses registration. If the holder of the international registration designates, for
example, China, Japan and Korea, and China and Japan grant an extension of
protection but Korea does not, the international registration continues in force.
 For the first five years of its existence, the international registration depends
completely on the status of the basic application or basic registration with the
Office of Origin. If during that time the basic application is refused or withdrawn
or the basic registration or the registration resulting from the basic application is
cancelled or has lapsed, the holder of the international registration may no longer
invoke the protection of that registration.
 The defeat of an international registration as to all designated Contracting Parties
through invalidation of its basic application or registration is known as “central
attack”.
 Similarly, if the basic registration is cancelled after the five years as a result of an
action that began during the five-year period, the international registration will
likewise be cancelled.
 Can an applicant designate a country in which it already has a registration for that
mark for those goods and services? Yes. An international registration under the
Madrid system replaces a national registration in a designated Contracting Party
for the same mark and the same goods and services recorded by the same
person.80 This replacement may be advantageous because renewals under the
international registration will be more convenient than renewing separate
registrations. Such replacement would take place automatically, without review by
the Office of Origin of the designated Contracting Party.
 Renewal
An international registration under the Madrid Protocol lasts for ten years and may be
renewed every ten years by paying the required fee to WIPO.
 Subsequent Designations
The holder of an international registration may at any time file a designation to extend
protection of its mark to an additional Contracting Party not named in its original
international application, known as a “subsequent designation.”
 Limitation, Renunciation or Cancellation
The holder of an international registration may (1) limit its list of goods and services
as to some or all designated Contracting Parties,100 (2) renounce protection as to
some, but not all, of the designated Contracting Parties as to all of its listed goods and
services,101 or (3) cancel its international registration as to all of the designated
Contracting Parties for some or all of its listed goods and services. Goods and services
that are the subject of limitations or renunciations may be recovered by a subsequent
designation upon payment of the required fees. After cancellation of an international
registration, however, the registration is removed from the International Register and
the former holder of the registration may not make a subsequent designation to revive
it.

 Amendment
A mark that is recorded in the International Register may not be amended at any time.
Even if the mark sought to be used differs just slightly from that in the international
registration and even if the mark was amended in the basic application or basic
registration, the holder of the international registration will likely have to file a new
international application for a new mark. A holder also may not extend the list of
goods or services on its international registration. If it wishes to extend protection
beyond those goods or services, it must file a new international application as to those
additional goods or services.
 Change of Name or Address of Holder or Its Representative
The holder may change its name or address or the name or address of its
representative on its international registration using an official form from the
International Bureau. It may file this form either with the Bureau or with its Office of
Origin.