Name: - samiksha jain
BA.LLB div (B)
URN No.: - 2017-B-17021999
Trademark law
Introduction
Trademarks provide exclusive rights to use distinctive signs, such as
symbols, colors, letters, shapes or names to identify the producer of a
product, and protect its associated reputation. A trademark can be a
combination of words, phrases, symbols, logos, designs, images or
devices, used by an individual, legal entity or business organization to
distinguish their products from that of others. For example, one can
identify the products of Nike, Reebok etc. through their logo, which is
embossed on their products.
Trademarks can be registered, which gives the holder the exclusive right
to use them. Once registered, trademarks are protected legally and the
owners can sue persons who use their trademarks. Trademark
protection lasts for 10 years after registration and, like patents, can be
renewed.
If a company creates a symbol or name it wishes to use exclusively, it
can simply attach the trademark symbol. This effectively marks the
territory and gives the company room to prosecute if other companies
attempt to use the same symbol for their own purposes.
In India, the registration term of the trademark is 10 years which can be
renewed further for next 10 years by paying the renewal fees.
In India, only the trademark proprietor whose trademark has been
registered can put the symbol into use. If any use the symbol without the
registration of mark he/she will be held under illegal use of the
trademark.
If anyone is engaged in selling or providing services by using the false
trademark, he/she will be entitled to the penalty of minimum 6 months
which may extend to maximum of 3 years and with the fine of not less
than Rs.50,000 and which can extend to Rs.2,00,000.
What is a trade mark?
A Trade Mark is a visual symbol in the form of a word, a device, or a
label applied to articles of commerce with a view to indicate to the
purchasing public that is a good manufactured or otherwise dealt in by a
particular person as distinguished from similar goods dealt or
manufacture by other persons
Object of Trade Mark
Object of trademark is to deal with the precise nature of the rights which
a person can acquire in respect of a TM-The mode of acquisition of such
rights -the method of transfer of those rights to others-the precise nature
of infringement of such rights-and the remedies available in respect
thereof.
Functions of a Trade Mark
It identifies the product of its origin
It guaranties its unchanged quality
It advertises the products
It creates an image for products.
What is a good Trade Mark?
It should be easy to pronounce and remember if it is word mark
In case of a device mark -should be capable of being described by
a single word.
It was be easy to spell correctly and write legibly
It should not be descriptive
It should be short
It should appeal to the eye as well as the ear.
It should not belong to the class of marks prohibited for registration
It should satisfy the requirements of registration.
Types of Trademark
Service mark
A service mark is any symbol name, sign, device or word which is
intentionally used in trade to recognize and differentiate the services of
one provider from others. Service marks do not cover material goods but
only the allocation of services. Service marks are used in day-to-day
services:
Sponsorship
Hotel services
Entertainment services
Speed reading instruction
Management and investment
Housing development services
A service mark is expected to play a critical role in promoting and selling
a product or services. A product is indicated by its service mark, and that
product’s service mark is also known as a trademark.
Collective mark
A collective mark is used by employees and a collective group, or by
members of a collaborative association, or the other group or
organization to identify the source of goods or services. A collective
mark indicates a mark which is used for goods and services and for the
group of organizations with similar characteristics. The organization or
group uses this mark for more than one person who is acting in a group
organization or legal entity for dividing the different goods or services.
Two types of collective marks for distinguishing with other goods or
services of similar nature:
Collective mark indicates that the marketer, trader or person is a part of
the specified group or organization. Example – CA is a collective
trademark which is used by the Institute of the chartered accountant.
Collective trademark and collective service mark are used to indicate the
origin or source of the product.
A collective trademark is used by the single members of a group of an
organization but is registered as a whole group. Example- CA is the title
or mark which given to the member of Institute of a chartered
accountant. That collective mark may be used by the group of
association. This was added to the Trademark Act, 1988.
Certification mark
A certificate mark is verification or confirmation of matter by providing
assurance that some act has been done or some judicial formality has
been complied with. A certification mark indicates certain qualities of
goods or services with which the mark is used is certified, a certification
mark is defined in the Trademark Act, 1999.
Certification trade mark means a mark competent of identifying the
goods or services in connection with which it is used in the manner of
trade, which is certified by the owner of the mark in respect of source,
body, mode of manufacturer of goods or performances of assistance,
quality, accuracy or other characteristics.
Those goods or services which not so certified and registrable as such
under this Act, in respect of those goods or services in the name as the
proprietor of the certification trade mark, of that person. Registration of
certification mark is done according to the Trademark Act, 1999.
Requirements for registration is the product must be competent to
certify.
Trade dress
Trade dress is a term that refers to features of the visual appearance of
a product or design of a building or its packaging that denote the source
of the product to customers. It is a form of intellectual property. Trade
dress protection is implemented to protect consumers from packaging or
appearance of products that framed to imitate other products.
Essential of trade dress
Anything that makes an overall look or overall dress and feel of
brand in the market.
The consumer believes that trade dress is the main indicator of
differentiation of one brand or goods from others.
The requirement for the registration of trade dress is the same as
the registration of the logo, mark. The features in trade dress are
size, color, texture, graphics, design, shape, packaging, and many
more.
Certification of Trademark
Sections 69 to 78 of the Trademark act deals with Certification of
Trademark.
Section 2 defines Certification Trade Mark as under-It is mark having the
capacity to distinguish the goods or services which are used in the
course of trade.
It states the features given by the proprietor about-
Origin
Material
Mode of Manufacture
Mode of Performance
Quality
Accuracy
These all are such feature which are different from the other goods or
services which are not certified or register able under chapter 9.
The certification Trade Marks is peculiar as it shows that the goods
covered thereby are certified by the competent person about its contents
this mark can be used even in additions to the users own trade mark.
These re given special treatment; the provisions can be briefly stated as
follow:
Some provisions of the Act do not apply to the CTM as given below-
Section 9(1)(a) and (c)
Section 18, 19, 20
some good provisions of Section s6 and
Chapter 12 except Section 160
The proprietor of the CTM shall not deal himself in those goods.
The person who so proposes shall choose an application duly
accompanying the draft of regulation. The Tribunal shall consider that
the mark should comprise an indication about CTM
The Registrar shall have to consider the following points viz-
competency of the applicant to certify the goods
satisfactory nature of the draft regulation
advantage to the public of course the Registrar is empowered to
accept the application or reject the application or allow the
application imposing conditions or limitations.
On acceptance of the application there shall be an advertisement in the
prescribed manner inviting objections.
In the trade mark registry, there shall be incorporated the regulation
governing the use of CTM. These may even be advertised at the
discretion of the Registrar inviting opposing and the decision shall be
after hearing.
If anybody commits an infringement of the regulations in any way shall
give arise to claim compensation.
However certain acts described below are not to be considered as
causing infringement-
The act is in relation to those places or circumstances where
registration did not extend.
The proprietor has expressly or impliedly consented to the use
The user forms an assessor without infringing the rights It is to be
noted if the CTM is one of many other register marks which are
sufficiently identical or resemblance then the use shall not be an
infringement.
Cancellation or varying the registration, any one aggrieved may choose
an application to the registrar to expunge the entry or regulation of CTM
which can be either of the following ground-
the proprietor has lost the competency to certify
proprietor failed to observe regulation
the registration is not necessary for public advantage
variation is needed in the regulation in the interest of the public
Lastly, needless to add the person who gets CTM registered shall get
exclusive right to use CTM subject to the condition and shall have the
right against infringement.
Registration of Trademark
Any person claiming to be the owner of the trademark or supposed to
use the trademark by him in future for this he may apply in writing to the
appropriate registrar in a prescribed manner. The application must
contain the name of the goods, mark and services, class of goods and
the services in which it falls, name and address of the applicant and
duration of use of the mark. Here the person means an association of
firms, partnership firm, a company, trust, state government or the central
government.
Conditions of registration
The central government by mentioning in the official gazette appoint a
person to be known as the controller, general of patents, designs and
trademark who shall be the registrar of the trademark. The central
government may appoint other officers also if they think that they are
appropriate, for the purpose of discharging, under the superintendence
and direction of the registrar, the registrar may authorize them to
discharge.
The registrar has the power to transfer or withdraw the cases by in
writing with reasons mentioned. Under Section 6 of the Act, discussed
the maintenance of a registered trademark. At head office wherein
particulars of registered trademarks and other prescribed, particulars,
except notice of the trust, shall be recorded. The copy of the register is
to be kept at each branch office. It gives for the preservation of records
in computer or diskettes or in any other electronic form.
Absolute grounds for refusal of registration
Absolute grounds for the refusal of registration are defined in Section 9
of the Act. The trademarks which can be lacking any distinctive
characteristics or which consists exclusively of marks or signals, which
can be used in trade to indicate the kind, fine, quantity, supposed
grounds, values, geographical origin.
And also, a time of production of goods or rendering of the offerings or
different characteristics of the goods or offerings which consists solely of
marks or indications which have come to be average in the present
language. That marks are not entitled to registration. Except it is
confirmed that the mark has in fact acquired a new character as a result
of use before the date of application.
It gives that a mark shall not be registered as trademarks if:
Its frauds the public or causes confusion.
There is any matter to hurt religious susceptibility.
There is an obscene or scandalous matter.
Its use is prohibited. It provides that if a mark contains exclusively
of (a) the shape of goods which form the nature of goods or, (b)
the shape of good which is needed to obtain a technical result or,
(c) the shape of goods which gives substantial value of goods then
it shall not be registered as trademark.
Trade Marks Infringement
Trademark infringement is a violation of the exclusive rights attaching to
a trademark without the authorization of the trademark owner or any
licensees (provided that such authorization was within the scope of the
license).
Infringement may occur when one party, the ‘infringer’, uses a trademark
which is identical or confusingly similar to a trademark owned by another
party, in relation to products or services which are identical or similar to
the products or services which the registration covers.
An owner of a trademark may commence legal proceedings against a
party which infringes its registration. Trademark infringements carry civil
penalties such as injunctions prohibiting continued violations and/or
monetary damages.
Hearst company Vs Dalal avenue verbal exchange Ltd.
The courtroom held that a trademark is infringed when a character in the
course of trade makes use of a mark which is same with or deceptively
similar to the trademark in terms of the goods in respect of which the
trademark is registered. Use of the mark by using such man or woman
needs to be in a manner which is more likely to be taken as getting used
as a trademark.
Conclusion
The trade mark is for protecting the name of the product or
services rather the product itself
Trade mark assures the customer about the source of a product,
though the quality of the product is not assured by the trade mark
The trade mark should be distinctive
Deceptively similar marks, geographical names etc. cannot be
registered as a trade mark
In India, the Trade Mark Act of 1999 is presently in force
The term of trade mark protection is 10 years, which can be
renewed from time to time, indefinitely
Trade mark can be assigned or transmitted
Using deceptively similar marks, falsifying the mark or using
unregistered mark cause infringement under Trade Mark Act
The penalties against offences related to trade mark can range
from fine to imprisonment.
