Trademark

By Tanisha Gangrade
 We will learn in this Lecture…
➢ About Trademark
➢ Definition of Trademark
➢ Signs which may serve as Trademarks
➢ Functions of Trademark
➢ Essential Features of Trademark
➢ Types of Trademarks
➢ Unfair Competition
➢ Trademark Act, 1999
➢ Infringement of Trademark
 Trade Mark

Definition:
➢ “A Trademark is any sign that
individualizes the goods of a given
enterprise and distinguishes them from
the goods of its competitors.”

➢ A trademark is a type of intellectual property, and typically a name, word,

phrase, logo, symbol, design, image, or a combination of these elements.
➢ A “Trademark” [TM] is defined under Section 2(zb) of the Indian
Trademarks Act, 1999 as

“Mark capable of being represented graphically and which is capable

of distinguishing the goods or services of one person from those of
others and may include a shape of goods, their packaging, and
combination of colors.”
 Signs which may serve as Trademarks

➢ Words: This category includes

company names, surnames,
forenames, geographical names and
any other words or sets of words,
whether invented or not, and slogans.

➢ Letters and Numerals: Examples are

one or more letters, one or more
numerals or any combination thereof.
➢ Devices: This category includes fancy devices,
drawings and symbols and also two-dimensional
representations of goods or containers.

➢ Coloured Marks: This category includes words, devices and any combinations
thereof in colour.

➢ Three-Dimensional Signs: A typical category of

three-dimensional (3D) signs is the shape of the goods
or their packaging.
 Functions of Trade Mark

1. To identify the goods and their origin.

2. To serve as a guarantee of unchanged quality of the goods.

3. It acts as a marketing and advertising device.

4. It creates an image of product in minds of consumers.

 Essential Features

1. It should be distinctive.
2. TM should preferably be an invented word. E.g.- ZEN
3. It should be easy to pronounce and remember if it is word mark.
4. In case of a device mark should be capable of being described by a single word.
5. It was easy to spell correctly and write legibly.
6. It should not be descriptive.
7. It should be short.
8. It should not belong to the class of marks prohibited for registration.
9. It should satisfy the requirements of registration.
 Types of Trade Mark

1. Word Marks - Right only in words, letters or numerals, no protection in

representation of the mark. (Word only)

2. Device Marks - Right of Unique representation of a word, letter or numeral

(Word + Logo)

3. Service Marks - Used only for services not goods. (45 classes in trademark, 1-34
goods, 35-45 services).
4. Collective Marks - Marks used by a group of companies collectively.
(Sony used by Bravia, Xperia etc).

5. Certification Marks - Used to define standards. (IS)✓

6. Well Known Marks - When a mark is recognized among a large percentage of

population it is termed as a well-known mark, well known marks enjoy greater
protection. (Extra fees) (either on application or if court has declared).
7. Unconventional Trademarks: Marks which get recognition for their inherently
distinctive feature.

1. Colour Trademark - Purple colour of dairy milk packet

2. Sound Marks - Phone ringtone on start-up

3. Shape Marks - 2d / 3d shapes

4. Smell Marks - Lush green smell in tennis balls, only in USA

 Unfair Competition

➢ The law of unfair competition is to safeguard the interest of the customers

from unfair or misleading trade practices.

Types of Unfair Competition:

1. Passing off 5. Product Disparagement

2. Misappropriation 6. Dilution

3. Right of Publicity 7. Infringement of Trade Dress

4. False Advertising
1. Passing Off

✓ Passing off occurs when one party sells his goods and services by affixing
another company's trademark on them.

✓ Passing off is confined to registered and unregistered trademarks, symbols, signs

and devices etc.,

✓ Passing off is an offence which is done by misrepresenting the goods and

services for creating confusion in customers mind which effects the image or
good will of the original manufacturer.
2. Misappropriation
➢ Misappropriation exists when one party uses the property of other party without
informing them.
➢ Misappropriation means unauthorized use of person’s name or likeness for
advertising purpose, which effects the image of other persons.
➢ The plaintiff does not possess any copy right for it and he cannot claim any
damages, ex- stock market rumours, new paper report etc.,

3. Right of Publicity: Allows individuals to protect their identities from being used
for commercial purpose by other parties. Many companies misuse the
celebrities name in fake to sell their products.
4. Product Disparagement: when a false statement is made with an intention to
harm a company or its products or its services, then it is known as "Product
Disparagement". It is also known as 'Trade Libel' or "Commercial
Disparagement".

5. Infringement of Trade Dress: the unique and distinctive feature of a product,

service, or business which differentiates it from others is known as "Trade
Dress".
Trade Dress protection is needed to restrict others from duplicating a product.
6. Dilution:

➢ Basically, Tarnishment and Blurring are the two important aspects which are
responsible for dilution of a product.

➢ The unauthorized use of a mark on a dissimilar product which damages the

distinctiveness of the that mark is known as 'Blurring'.

➢ 'Tarnishment' refers to the unauthorized use of mark for a poor-quality

product which effects the products of mark owner.
 Trade Mark Act, 1999

Introduction

➢ Patents, designs and copyright are protected only for a limited period.

➢ On the other hand, in General, a registered trademark can be protected in

perpetuity subject only to the following conditions-

✓ It is used and renewed periodically and

✓ The registered proprietor takes prompt action against infringers.

➢ The present Trademarks Act, 1999 has replaced the Trade and Merchandise
Marks Act, 1958. And the Trademarks Act, 1999 has been brought into force
only on 15th September 2003.

➢ The Trademark Rules, 2002 are passed under the Trademarks Act, 1999.
Objectives of the Trademark Act,1999

1. Developments in trading and commercial practices.

2. Increasing globalization of trade and industry.

3. The need to encourage investment flows and transfer of technology.

4. Need for simplification & harmonization of trademark management systems

and

5. To give effect to important judicial decisions

Under Trademark Act of 1999

1. To provide for registration of trademark for services, in addition to goods.

2. Registration of trademarks, which are imitation of well-known trademarks, not

to be permitted, besides enlarging the grounds for refusal of registration.

3. Amplification of factors to be considered for defining a well-known mark.

4. To provide only a single register with simplified procedure for registration and

with equal rights.

5. Providing for registration of “Collective Marks” owned by associations.

6. Providing an Appellate Board for speedy disposal of appeals ad rectification

applications.

7. Providing enhanced punishment for the offences relating to trademarks.

8. Prohibiting someone else's trademark as part of corporate names, or name of

business concern.

9. Provision for filing a single application for registration in more than one class.

10. Increasing the period of registration and renewal from 7 to 10 years.

 INFRINGEMENT

➢ Trademark Infringement Under the Trademarks Act, 1999 a person infringes a

registered trademark if the person “uses as a trademark” a sign which is:
➢ “Substantially Identical” with or “Deceptively Similar” to the registered
trademark on goods or services covered by the trademark registration.
➢ Substantially identical with or deceptively similar to the registered trademark on
goods or services of the same description as, or closely related to, the goods or
services of the registration, where such use is likely to deceive or to cause
confusion.
➢ Which may be detrimental to proprietor.
 There are two types of remedies available for the infringement of Trademark.
These remedies are: -

1. Infringement Action

✓ An action for infringement, which is a statutory right, is dependent on the

validity of the registration of the mark.
✓ Infringement of a Trademark is a violation of property rights.

✓ Trademark registration is prima facie proof of ownership of the mark.

✓ The jurisdiction and procedure, in infringement suit, is governed by the Civil

Procedure Code.
✓ The period of limitation for filing the suit for infringement is three years
from date of infringement.
✓ The relief and remedy in infringement proceedings include-
• Injunction; Restraining the future use of the mark.

• Damages or on account of profits.

• Order for delivery of the infringing labels and marks for destruction.

• Seizure and confiscation of the infringing goods by the police department.

• Arrest of the infringers.

• Fines and penalties.

2. Passing Off:

✓ An action of passing off is a direct subject matter of or common law of right.

✓ Passing off is not defined in The Trade and Merchandise Marks Act, but it
provides the rules of procedure and the remedies available.
✓ In the case of unregistered yet well-known marks, the owner of the mark can
initiate a passing off action in the appropriate Court of law.
✓ Regarding trademarks, there are numerous international treaties. Many of
them include:
✓ There are many international agreements pertaining to trademarks. some of
them are:
1. Madrid agreement concerning international Registration of marks.
2. Agreement of Madrid for the prevention of false or misleading
indications of source on goods and the additional act of Stockholm.
3. Lisbon agreement for the protection of appellations of origin and
international.
4. Registration Trade law treaty and regulations (TLT)
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