Table of Contents

1. Introduction 3
2. The Concept of Intellectual Property 3
3. Intellectual Property System in India 5
4. Development of trips complied regime in India 6
5. Trade mark act, 1999 7
6. Historical Perspective 9
7. Harmonization with International Norms and Standards 10
8. Object of Trade Marks Law 12
9. Fundamental concepts 13
10. Terminology 14

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11. Trade Marks 15
12. Function of Trade Mark 15
13. What's the Purpose of Trademark Law? 17
14. Different forms of Protecting Trade Mark 17
15. Property in Trade Mark 17
16. Requirement 18
17. Priority 21
18. Certification Trade Marks Registration 21
19. Various Grounds for refusal 22
20. Statutory defence available under the Act 23
21. Special Considerations in case of well-known mark 23
22. Opposition (before the Registrar) and Cancellation (before the Registrar as well as
Appellate Board) 23
23. Assignment/ license 24
24. Renewal 24
25. Case laws 24
26. Bibliography 29

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 INTRODUCTION1

Intellectual property refers to the creations of the human mind like inventions, literary and
artistic works,and symbols, names, images and designs used in commerce. Intellectual
property is divided into two categories: Industrial property, which includes inventions
(patents), trademarks, industrial designs, and geographic indications of source; and
Copyright, which includes literary and artistic works such as novels, poems and plays, films,
musical works, artistic works such as drawings, paintings, photographs and sculptures, and
architectural designs. Rights related to copyright include those of performing artists in their
performances, producers of phonograms in their recordings, and those of broadcasters in their
radio and television programs. Intellectual property rights protect the interests of creators by
giving them property rights over their creations.

The most noticeable difference between intellectual property and other forms of property,
however, is that intellectual property is intangible, that is, it cannot be defined or identified by
its own physical parameters. It must be expressed in some discernible way to be protectable.
Generally, it encompasses four separate and distinct types of intangible property namely —
patents, trademarks, copyrights, and trade secrets, which collectively are referred to as
“intellectual property.” However, the scope and definition of intellectual property is
constantly evolving with the inclusion of newer forms under the gambit of intellectual
property. In recent times, geographical indications, protection of plant varieties, protection
for semi-conductors and integrated circuits, and undisclosed information have been brought
under the umbrella of intellectual property.

The Concept of Intellectual Property

The concept of intellectual property is not new as Renaissance northern Italy is thought to be
the cradle of the Intellectual Property system. A Venetian Law of 1474 made the first
systematic attempt to protect inventions by a form of patent, which granted an exclusive right
to an individual for the first time. In the same century, the invention of movable type and the
printing press by Johannes Gutenberg around 1450, contributed to the origin of the first
copyright system in the world. Towards the end of 19th century, new inventive ways of
manufacture helped trigger large-scaleindustrialization accompanied by rapid growth of

1
http://www.slideshare.net/HarshMishra3/intelle

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cities, expansion of railway networks, the investment ofcapital and a growing transoceanic
trade. New ideals of industrialism, the emergence of stronger centralized governments, and
nationalism led many countries to establish their modern Intellectual Property laws. At this
point of time, the International Intellectual Property system also started to take shape with the
setting up of the Paris Convention for the Protection of Industrial Property in 1883 and the
Berne Convention for the Protection of Literary and Artistic Works in 1886. The premise
underlying Intellectual Property throughout its history has been that the recognition and
rewards associated with ownership of inventions and creative works stimulate further
inventive and creative activity that, in turn, stimulates economic growth.

Over a period of time and particularly in contemporary corporate paradigm, ideas and
knowledge have become increasingly important parts of trade. Most of the value of high
technology products and new medicines lies in the amount of invention, innovation, research,
design and testing involved. Films, music recordings, books, computer software and on-line
services are bought and sold because of the information and creativity they contain, not
usually because of the plastic, metal or paper used to make them. Many products that used to
be traded as low-technology goods or commodities now contain a higher proportion of
invention and design in their value, for example, brand-named clothing or new varieties of
plants. Therefore, creators are given the right to prevent others from using their inventions,
designs or other creations. These rights are known as intellectual property rights.

The Convention establishing the World Intellectual Property Organization (1967) gives the
following list of the subject matter protected by intellectual property rights:

 literary, artistic and scientific works;

 performances of performing artists, phonograms, and broadcasts;
 inventions in all fields of human endeavor;
 scientific discoveries;
 industrial designs;
 trademarks, service marks, and commercial names and designations;
 protection against unfair competition; and
 “All other rights resulting from intellectual activity in the industrial, scientific,
literary or artistic fields.”

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With the establishment of the world trade Organization (WTO), the importance and role of
the intellectualproperty protection has been crystallized in the Trade-Related Intellectual
Property Systems (TRIPS) Agreement. It was negotiated at the end of the Uruguay Round of
the General Agreement on Tariffs and Trade (GATT) treaty in 1994.

The TRIPS Agreement encompasses, in principle, all forms of intellectual property and aims
at harmonizing and strengthening standards of protection and providing for effective
enforcement at both national and international levels. It addresses applicability of general
GATT principles as well as the provisions in international agreements on IP (Part I). It
establishes standards for availability, scope, use (Part II), enforcement (Part III), acquisition
and maintenance (Part IV) of Intellectual Property Rights. Furthermore, it addresses related
dispute prevention and settlement mechanisms (Part V). Formal provisions are addressedin
Part VI and VII of the Agreement, which cover transitional and institutional arrangements,
respectively.

The TRIPS Agreement, which came into effect on 1 January 1995, is to date the most
comprehensive multilateral agreement on intellectual property. The areas of intellectual
property that it covers are:

1. Copyright and related rights (i.e. the rights of performers, producers of sound
recordings andbroadcasting organisations);
2. Trademarks including service marks;
3. Geographical indications including appellations of origin;
4. Industrial designs;
5. Patents including protection of new varieties of plants;
6. The lay-out designs (topographies) of integrated circuits;
7. The undisclosed information including trade secrets and test data.

Intellectual Property System in India

Historically the first system of protection of intellectual property came in the form of
(Venetian Ordinance) in 1485. This was followed by Statute of Monopolies in England in
1623, which extended patent rights for Technology Inventions. In the United States, patent
laws were introduced in 1760. Most European countries developed their Patent Laws between
1880 to 1889. In India Patent Act was introduced in the year 1856 which remained in force
for over 50 years, which was subsequently modifiedand amended and was called "The

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Indian Patents and Designs Act, 1911". After Independence acomprehensive bill on patent
rights was enacted in the year 1970 and was called "The Patents Act, 1970".Specific statutes
protected only certain type of Intellectual output; till recently only four forms were protected.

The protection was in the form of grant of copyrights, patents, designs and trademarks. In
India, copyrights were regulated under the Copyright Act, 1957; patents under Patents Act,
1970; trademarks under Trade and Merchandise Marks Act 1958; and designs under Designs
Act, 1911. With the establishment of WTO and India being signatory to the Agreement on
Trade-Related Aspects of Intellectual Property Rights (TRIPS), several new legislations were
passed for the protection of intellectual property rights to meet the international obligations.
These included: Trade Marks, called the Trade Mark Act, 1999; Designs Act, 1911 was
replaced by the Designs Act, 2000; the Copyright Act, 1957 amended a number of times, the
latest is called Copyright (Amendment) Act, 2012; and the latest amendments made to the
Patents Act, 1970 in 2005. Besides, new legislations on geographical indications and plant
varieties were also enacted. These are called Geographical Indications of Goods (Registration
and Protection) Act, 1999, and Protection of Plant Varieties and Farmers’ Rights Act, 2001
respectively.

Over the past fifteen years, intellectual property rights have grown to a stature from where it
plays a major role in the development of global economy. In 1990s, many countries
unilaterally strengthened their laws and regulations in this area, and many others were poised
to do likewise. At the multilateral level, the successful conclusion of the Agreement on
Trade-Related Aspects of Intellectual Property Rights (TRIPS) in the World Trade
Organization elevates the protection and enforcement of IPRs to the level of solemn
international commitment. It is strongly felt that under the global competitive environment,
stronger IPR protection increases incentives for innovation and raises returns to international
technology transfer.

DEVEOPMENT OF TRIPS COMPLIED REGIME IN INDIA

The establishment of WTO as a result of institutionalization of international framework of

trade calls for harmonization of several aspects of Indian Law relating to Intellectual Property
Rights. The TRIPS agreement set minimum standards for protection for IPR rights and also
set a time frame within which countries were required to make changes in their laws to
comply with the required degree of protection. Inview of this, India has taken action to
modify and amend the various IP Acts in the last few years.

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 TRADE MARK ACT, 1999

The law of trademarks is also now modernized under the Trademarks Act of 1999. A
trademark is a specialsymbol for distinguishing the goods offered for sale or otherwise put on
the market by one trader from those of another. In India the trademarks have been protected
for over four decades as per the provisions of the Trade and Merchandise Mark (TMM) Act
of 1958. India became a party to the WTO at its very inception. One of the agreements in that
related to the Intellectual Property Rights (TRIPS). In December, 1998 India acceded to the
Paris Convention.

Meanwhile, the modernization of Trade and Merchandise Marks Act, 1958 had been taken up
keeping in view the current developments in trading and commercial practices, increasing
globalization of trade and industry, the need to encourage investment flows and transfer of
technology, need for simplification of trademark management system and to give effect to
important judicial decisions. To achieve these purposes, the Trademarks Bill was introduced
in 1994. The Bill pointed towards the changes which were contemplated and were under
consideration of the Government of India, but it lapsed in 1994. A comprehensive review was
made of the existing laws in view of the developments in trading and commercial practices,
and increasing globalization of trade and industry.

The Trademarks Bill of 1999 was passed by Parliament that received the assent of the
President on 30thDecember, 1999 as Trade Marks Act, 1999 thereby replacing the Trade and
Merchandise Mark Act of 1958.

The Trade Marks Act2was the first statute law on trade marks in India .Prior to that protection
of trademarks was left to the governed by Common Law. Cases concerning trade marks were
decided in the light of section 54 of Specific Relief Act, 1877, while registration was secured
by obtaining a declaration as to ownership under the Indian Registration Act, 19083.

The important salient features of the Act inter-alia include:

 It broadens the definition of infringement of a registered trademark to include action

against theunauthorized use of a confusingly similar mark, not only in respect of the
goods and servicescovered by registration, as was previously the case, but also in

2
The Trade Marks Act, 1940 (5 of 1940)
3
Whirlpool Corporation vs. Registrar of Trade Marks

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 respect of goods and services whichare so similar that a likelihood of deception or
confusion exists.
 An action for infringement will also be available against the unauthorised use of a
mark in relation todissimilar goods, if such mark is similar to a registered mark that is
well known in India and theinterest of the owner is likely to be affected adversely.
The remedy for infringement of a trademark isalso strengthened under the new law by
authorising the police with the power to seize infringingarticles without a warrant.

A trade mark provides protection to the owner of the mark by ensuring the exclusive right to
use it, or to authorize another to use the same in return for payment. The period of protection
varies, but a trademark can be renewed indefinitely beyond the time limit on payment of
additional fees. In a larger sense, trademarks promote initiative and enterprise worldwide by
rewarding the owners of trademarks with recognition and financial profit.

Trade mark protection also hinders the efforts of unfair competitors, such as counterfeiters, to
use similar distinctive signs to market inferior or different products or services. The system
enables people with skill and enterprise to produce and market goods and services in the
fairest possible conditions, thereby facilitating international trade.

With the advent of WTO, the law of trade marks is now modernized under the Trade Marks
Act of 1999 and is in harmony with two major international treaties on the subject, namely,
The Paris Convention for Protection of Industrial Property and TRIPS Agreement.

Trade marks being an important aspect of the intellectual property, students need to be well
versed with the conceptual and legal framework, and procedural requirements relating to
trade marks.

A trade mark (popularly known as brand name in layman’s language) is a visual symbol
which may be a word to indicate the source of the goods, a signature, name, device, label,
numerals, or combination of colours used, or services, or other articles of commerce to
distinguish it from other similar goods or services originating from another. It is a distinctive
sign which identifies certain goods or services as those produced or provided by a specific
person or enterprise. Its origin dates back to ancient times, when craftsmen reproduced their
signatures, or "marks" on their artistic or utilitarian products. Over the years these marks
evolved into today's system of trade mark registration and protection. The system helps

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consumers identify and purchase a product or service because its nature and quality, indicated
by its unique trade mark, meets their needs.

A trade mark provides protection to the owner of the mark by ensuring the exclusive right to
use it or to authorize another to use the same in return for payment. The period of protection
varies, but a trade mark can be renewed indefinitely beyond the time limit on payment of
additional fees. Trade mark protection is enforced by the courts, which in most systems have
the authority to block trade mark infringement. In a larger sense, trademarks promote
initiative and enterprise worldwide by rewarding the owners of trademarks with recognition
and financial profit. Trade mark protection also hinders the efforts of unfair competitors, such
as counterfeiters, to use similar distinctive signs to market inferior or different products
orservices. The system enables people with skill and enterprise to produce and market goods
and services in the fairest possible conditions, thereby facilitating international trade.

Historical Perspective

The Indian Trade Marks Act, 1940 was the first statute law on trade marks in India. Prior to
that protection of trade marks was governed by Common Law. Cases concerning trade marks
were decided in the light of Section 54 of Specific Relief Act, 1877, while registration was
secured by obtaining a declaration as to ownership under the Indian Registration Act, 1908.
Some of the provisions of the first Trade Marks Act, 1940 came into force on 11.3.1940 and
the rest became effective on 1.6.19424.

The said enactment was amended by the Trade Marks (Amendment) Act, 1941 and later by
two other amendments. By the Trade Marks (Amendment) Act, 1943, the Trade Marks
Registry, which was formerly a part of the Patent Office, Calcutta (now Kolkata) was
separated from the Patent Office to constitute a separate Trade Marks Registry under a
Registrar of Trade Marks at Bombay (now Mumbai). Thereafter, the Act was amended by the
Trade Marks (Amendment) Act, 1946, to give effect to the reciprocal arrangement relating to
trade marks between the Government of India and the then Indian States and further
amendments introduced by Part B States Laws Act, 1951.

The Trade Marks Enquiry Committee, which was constituted by the Government of India in
November 1953, recommended some changes, but since the report showed some divergence
of opinion among the members, Mr. Justice RajagopalaAyyangar(then a Judge of the

4
(Gazette of India Extraordinary, 1942. p.684)

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Madras High Court, who later served and retired as a judge of the Supreme Court) was
appointed by the Government of India to examine the Trade Marks Act, 1940, with reference
to the report of the Trade Marks Enquiry Committee and to recommend as to what changes in
the then law were necessary. On the basis of the report of Mr. Justice Ayyangar, the Trade
Marks Act, 1940 was replaced by the Trade & Merchandise Marks Act, 1958. The Trade
&Merchandise Marks Act, 1958 consolidated the provisions of the Trade Marks Act, 1940,
the IndianMerchandise Marks Act, 1889 (which was in force since 1.4.1889) and the
provisions relating to trade marksin the Indian Penal Code. The Trade & Merchandise Marks
Act, 1958 was brought into force on 25thNovember 1959. Certain minor amendments were
carried out by the Repealing & Amending Act, 1960 and the Patents Act, 1970. Thus, the
history of legal protection to trade marks in India is more than a century old.

Harmonization with International Norms and Standards

The process of harmonization with International norms and standards started, when it was felt
that a comprehensive review of the Trade & Merchandise Marks Act, 1958 be made in view
of new developments in trading and commercial practices, increasing globalization of trade
and industry, the need to encourage investment flows and transfer of technology and need for
simplification and harmonization of trade mark management system in the country.

With the advent of WTO, the law of trade marks is now modernized under the Trade Marks
Act of 1999 which provides for the registration of service marks and introduces various other
provisions in conformity with the Trade Mark Law in developed countries.

In this context, the Trade Marks Bill, 1993 was introduced in the Lok Sabha on 19.5.1993,
which was passed by the Lok Sabha on the lines recommended by the Standing Committee.
However, as the Bill failed to get through the Rajya Sabha, it lapsed on the dissolution of the
Lok Sabha. A new Bill titled as Trade Marks Bill, 1999 was introduced in Rajya Sabha and
eventually passed by both the Houses of Parliament. The Bill received the assent of the
President on 30.12.1999 and became an Act.

The Trade Marks Act, 1999 has been enacted as indicated in the Preamble to the Act to
amend and consolidate the law relating to trade marks, to provide for registration and better
protection of trade marks for goods and services and for the prevention of the use of
fraudulent marks. It repealed the earlier Trade & Merchandise Marks Act, 1958. The current
law of trademarks contained in the Trade Marks Act, 1999 is in harmony with two major

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international treaties on the subject, namely, The Paris Convention for Protection of Industrial
Property and TRIPS Agreement, to both of which India is a signatory.

Under the Trade Marks Act, the Controller -General of Patents, Designs and Trade Marks
under Department of Industrial Policy and Promotion, Ministry of Commerce and Industry is
the ‘Registrar of Trade Marks’. The Controller General of Patents, Designs & Trade Marks
directs and supervises the functioning of the TradeMarks Registry (TMR). The Trade Marks
Registry administers the Trade Marks Act, 1999 and the Rulesthereunder. TMR acts as a
resource and information centre and is a facilitator in matters relating to trademarks in the
country. The main function of the Registry is to register trademarks which qualify for
registration under the Act and Rules.

The salient features of the Trade Marks Act, 1999 inter-alia include:

1. Providing for registration of trade mark for services, in addition to goods.

2. Amplification of definition of trade mark to include registration of shape of goods,
packaging andcombination of colours.
3. All 42 international classification of goods and services (as earlier used) now
applicable to India aswell.
4. Recognition of the concept of "well-known trademarks".
5. Increasing the period of registration and renewal of trade marks from 7 to 10 years, to
bring it inconformity with the accepted international practice.
6. Widening the scope of infringement of trade marks. For instance, use of a registered
trade mark astrade name or as a part of a trade name or use of a mark which is
identical or deceptively similar toa registered trade mark.
7. Creation of an "Intellectual property Appellate Board" for hearing appeals against
orders anddecisions of the Registrar of Trade Marks for speedy disposal of cases and
rectification applicationswhich hitherto lie before High Courts.
8. Criminal remedies in case of falsification of trade marks.
9. Recognition of use of trade mark by even an unregistered licensee.
10. Expeditious examination of a trade mark application on payment of five times the
application fee.

The rights granted under the Act, are operative in the whole of India. The new Act also
simplified the procedure for registration of registered user, enlarged the scope of permitted
use and allowed the registration of "collective marks” owned by associations, etc. The Act

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empowers the Registrar to register certification trademarks. Earlier, this power was vested
with the Central Government. Provision for enhanced punishment for the offences relating to
trade marks on the lines of Copyright Act, 1957; restriction on sale of spurious goods; and
use of someone else's trademarks as part of corporate names, or name of business concern
have also been incorporated in the new Act.

The new Act also has broadened the definition of infringement of a registered trade mark to
include actionagainst the unauthorized use of a confusingly similar mark, not only in respect
of the goods and servicescovered by registration, as was previously the case, but also in
respect of goods and services which are so similar that a likelihood of deception or confusion
exists.Civil suits can be instituted by any aggrieved person before a District Court, within the
local limits of whose jurisdiction such aggrieved person actually and voluntarily resides or
carries on business or personally worksfor gain. This new provision brings the trade mark law
in line with the provisions for jurisdiction contained in the Copyright Act, 1957.

Under the Trade Marks Act, 1999 the Government of India is empowered to make rules for
implementing the Act and regulating the trade marks Administration. Accordingly, the
Government framed Trade Marks Rules, 2001. These rules were subsequently amended in
2002 and came into force on the date on which the Trade Marks Act, 1999 came into force
i.e. 15-09-2003. These rules have been amended again in 2010 called Trade Marks
(Amendment) Rules, 2010 which have come into force with effect from May 20, 2010.

Object of Trade Marks Law

The object of trade mark law has been explained by the Supreme Court in DauDayal v. State
of Uttar Pradesh5, in the following words:

“The object of trade mark law is to protect the rights of persons who manufacture and sell
goods with distinct trade marks against invasion by other persons passing off their goods
fraudulently and with counterfeit trademarks as those of the manufacturers. Normally, the
remedy for such infringement will be by action in Civil Courts.

But in view of the delay which is incidental to civil proceedings and the great injustice which
might result if the rights of manufacturers are not promptly protected, the law gives them the

5
AIR 1959 SC 433

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right to take the matter before the Criminal Courts, and prosecute the offenders, so as to
enable them to effectively and speedily vindicate their rights”.

The distinction between a trade mark and a property mark has been stated by the Supreme
Court in the case of Sumat Prasad Jain v. Sheojanam Prasad and Ors.6, The Apex Court
held:

“…Thus, the distinction between a trade mark and a property mark is that whereas the
former denotes the manufacture or quality of the goods to which it is attached, the latter
denotes the ownership in them. In other words, a trade mark concerns the goods themselves,
while a property mark concerns the proprietor. A property mark attached to the movable
property of a person remains even if part of such property goes out of his hands and ceases to
be his.”

The trade mark law in India is a ‘first-to-file’ system that requires no evidence of prior use of
the mark. A trade mark application can be filed on a ‘proposed to be used or intent-to-use’
basis or based on use of the mark. The term ‘use’ under the Trade Marks Act, 1999 has
acquired a broad meaning and does not necessarily mean the physical presence of the goods
in India. Presence of the trade mark on the Internet and publication in international magazines
and journals having circulation in India are also considered as use in India. One of the first
landmark judgments in this regard is the “Whirlpool case”7in which the Court held that a
rights holder can maintain a passing off action against an infringer on the basis of the trans-
border reputation of its trademarks and that the actual presence of the goods or the actual use
of the mark in India is not mandatory. It would suffice if the rights holder has attained
reputation and goodwill in respect of the mark in India through advertisements or other
means.

Fundamental concepts

The essential function of a trademark is to exclusively identify the commercial source or

origin of products or services, such that a trademark, properly called, indicates source or
serves as a badge of origin. In other words, trademarks serve to identify a particular business
as the source of goods or services. The use of a trademark in this way is known as trademark
use. Certain exclusive rights attach to a registered mark, which can be enforced by way of an

6
AIR 1972 SC 413.
7
[N. R. Dongre v. Whirlpool Corporation, 1996 (16) PTC 583]

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action for trademark infringement, while in some countries unregistered trademark rights can
be enforced pursuant to the common law tort of passing off. It should be noted that trademark
rights generally arise out of the use or to maintain exclusive rights over that sign in relation to
certain products or services, assuming there are no other trademark objections. Different
goods and services have been classified by the International (Nice) Classification of Goods
and Services into 45 Trademark Classes8. The idea of this system is to specify and limit the
extension of the intellectual property right by determining which goods or services are
covered by the mark, and to unify classification systems around the world.

Terminology

Terms such as "mark", "brand" and "logo" are sometimes used interchangeably with
"trademark". "Trademark", however, also includes any device, brand, label, name, signature,
word, letter, numerical, shape of goods, packaging, colour or combination of colours, smell,
sound, movement or any combination thereof which is capable of distinguishing goods and
services of one business from those of others. It must be capable of graphical representation
and must be applied to goods or services for which it is registered.

Specialized types of trademark include certification marks, collective trademarks and

defensive trademarks. A trademark which is popularly used to describe a product or service
(rather than to distinguish the product or services from those of third parties) is sometimes
known as a genericized trademark. If such a mark becomes synonymous with that product or
service to the extent that the trademark owner can no longer enforce its proprietary rights, the
mark becomes generic.9

Above snapshot shows the approximate drawing of Burberry check pattern. The pattern is a
registered trademark of Burberry Ltd.

8
1 to 34 cover goods, and 35 to 45 services
9
www.wikipedia.org

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Trade Marks

Trademarks have been defined as any sign, or any combination of signs capable of
distinguishing the goods or services of one undertaking from those of other undertakings.
Such distinguishing marks constitute protectable subject matter under the provisions of the
TRIPS Agreement. The Agreement provides that initial registration and each renewal of
registration shall be for a term of not less than 7 years and the registration shall be renewable
indefinitely. Compulsory licensing of trademarks is not permitted10. Keeping in view the
changes in trade and commercial practices, globalisation of trade, need for simplification and
harmonisation of trademarks registration systems etc., a comprehensive review of the Trade
and Merchandise Marks Act, 1958 was made and a Bill to repeal and replace the 1958 Act
has since been passed by Parliament and notified in the Gazette on 30.12.1999. This Act not
only makes Trade Marks Law, TRIPS compatibility but also harmonises it with international
systems and practices. Work is underway to bring the law into force more...

 The Trade and Merchandise Marks Act,1958

 An Act to provide for the registration and better protection of Trade Marks and for the
prevention of the use of fraudulent marks on merchandise.

Trade Mark means a registered trade mark or a mark used in relation to goods for the purpose
of indicating or so as to indicate a connection in the course of trade between the goods and
some person having the right as proprietor to use the mark; and a mark used or proposed to be
used in relation to goods for the purpose of indicating or so as to indicate a connection in the
course of trade between the goods and some person having the right, either as proprietor or as
registered user, to use the mark whether with or without any indication of the identity of that
person, and includes a certification trade mark.11

Function of Trade Mark

The function of a trade mark is to give an indication to the purchaser or possible purchaser
asto the manufacture or quality of the goods, to give an indication to his eye of the trade
source from which the goods come, or the trade hands through which they pass on their way
to the market. It tells the person who is about to buy that what is presented to him is either

10
The intention to use a trademark can be proven by a wide range of acts as shown in the "Wooly Bull" and
"Ashton v Harlee" cases
11
Section 2(v) of the Trade and Merchandise Marks Act, 1958

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what he has known before under the similar name as coming from a source with which he is
acquainted, or that it is what he has heard of before as coming from that similar source. It
gives the purchaser a satisfactory assurance of the mark and quality of the article he is
buying, the particular quality being not discernible by the eye. It is on the faith of the mark
being genuine and representing a quality equal to that which he has previously found a mark
may be used to indicate not only that the goods are of a particular maker but are goods of that
maker of a particular kind or quality. Thus a trader may indicate his best quality by one trade
mark, his second quality by another trade mark and so on.

Under modern business conditions a trade mark performs four functions:

1. it identifies the product and its origin,

2. it guarantees its unchanged quality,
3. it advertises the product, and
4. It creates an image for the product.

Object of Protecting Trade Mark With the immense growth in the scale of business, and the
advertising that accompanies it, modern customers rarely have that personal knowledge of
suppliers which is the hallmark of a village economy. Even so, their interest in source of
supply has not in essence changed. Information about origin is only a means towards an end:
their main concern is in the quality of what they are buying. In the case of some goods, part
of that quality may be bound up with source in a specific way: as for instance, when the
goods will need servicing and the manufacturer or supplier is looked to for the services. But
in a great many cases source, particularly when indicated by a Cypher such as a product mark
or get-up, does not have even this significance. What it does is to enable the purchaser to link
goods or services to a rangeof personal expectations about quality which derive from
previous dealings, recommendations of others, attractive advertising and so on. Nor should it
be forgotten that, however persuasively the advertiser may seek to promote this sort of
symbol, it retains a neutral character in one sense: once a consumer learns that he does not
want particular goods, the mark, name or get-up becomes a significant warning signal. A law
protecting marks, names and get-up accordingly, seems unavoidable in a capitalist economy.
In various aspects, however, these laws have tended to develop in a manner that may appear
to confer power without responsibility. The trade mark owner acquires the all-important right
to stop imitations of his indication of source, but his own use is conditioned by few
limitations of positive requirement. It is perfectly possible for the public to be taught that a

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box bearing a particular mark and get-up contains 500 gm. of chocolates and then, by discreet
expansion of the packaging, to reduce that amount to 475 grams.12

What's the Purpose of Trademark Law?

Trademark law, by preventing others from copying a source-identifying mark, 'reduce[s] the
customer's costs of shopping and making purchasing decisions,' for it quickly and easily
assures a potential customer that the this item -- the item with this mark -- is made by the
same producer as other similarly marked items that he or she liked (or disliked) in the past. At
the same time, the law helps assure a producer that it (and not an imitating competitor) will
reap the financial, reputation-related rewards associated with a desirable product.13

In short, trademark law is about informed purchasing decisions and commercial morality.

Different forms of Protecting Trade Mark:

If the mark is a registrable one the best way to protect it is by registration. Infringement of the
mark can be easily established. If the infringing mark is identical and the goods covered by
registration, the success in an action for infringement is almost certain unless the registration
can be attacked on the ground of invalidity of registration or the defendant could established
honest concurrent user, or acquiescence on the part of the registered proprietor, or prior user.
If the marks are not identical but only similar then the plaintiff will have to establish that the
defendants` mark is deceptively similar, that is to say, the similarity is such as to be likely to
deceive or cause confusion which is a proposition not easy to establish. Ultimately the
question of similarity is one for the judge to decide on which opinion may often differ. In the
case of unregistered marks and marks which are not registrable the only way they can be
protected is by an action for passing off. The plaintiff will have to prove sufficient use of the
mark so as to create valuable goodwill of the business connected with the goods bearing the
mark.14

Property in Trade Mark

Under common law a trader acquires a right of property in a distinctive trade mark merely by
using it upon or in relation to some goods irrespective of the length of such user or the extent

12
Surya Roshni Ltd. v. Samana Steel Ltd., AIR 1997 Del 321, where plaintiff was held entitled to temporary
injunction for protecting its trade mark
13
Qualitex Co. v. Jacobson Products Co, U.S. Supreme Court (1995)
14
M/s Pepsi Foods Limited v. Collector of Central Excise, Chandigarh

Page | 16
of his trade. As between two who are each desirous of adopting the same mark it is entirely a
question of who gets there first. Property in a trade mark which is only proposed to be used in
relation to some goods can beobtained by registration of the mark under the Trade and
Merchandise Marks Act, 1958. There is no right to the exclusive ownership of a trade mark
apart from its use or application of it in connection with some vendible commodity. In other
words property in a trade mark does not exist in vacuum.

A law protecting marks, names and get-up accordingly, seems unavoidable in a capitalist
economy. In various aspects, however, these laws have tended to develop in a manner that
may appear to confer power without responsibility. The trade mark owner acquires the all-
important right to stop imitations of his indication of source, but his own use is conditioned
by few limitations of positive requirement. It is perfectly possible for the public to be taught
that a box bearing a particular mark and get-up contains 500 gm. of chocolates and then, by
discreet expansion of the packaging, to reduce that amount to 475 grams.15

Requirement

A 'Trademark' means a mark capable of being represented graphically and which is capable
of distinguishing the goods or services of one person from those of others. A 'Mark' includes
a device, brand, heading, label, ticket, name (including abbreviations), signature, word, letter,
numerals, shape of goods, packaging or combination of colors and any combination thereof.
Beside goods India now allows registration in respect of service marks, shape of goods,
packaging or combination of colours. A 'Mark' includes a device, brand, heading, label,
ticket, name (including abbreviations), signature, word, letter, numerals, and shape of goods,
packaging or combination of colours and of combination thereof. In India definition of mark
includes shape of goods and therefore now the three dimensional or 3-Dimensional or 3D
Marks could be registered under the provisions of Indian Trademark Act, 1999. The manner
in which same has to be provided while filing the trademark application is provided16, which
states as under:

Rule 29: Additional Representation:

(1).......

15
Surya Roshni Ltd. v. Samana Steel Ltd., AIR 1997 Del 321
16

under sub-rule 3 of rule 29 of the Trademark Rules

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(2)........

(3) Where the application contains a statement to the effect that the trade mark is a three
dimensional mark, the reproduction of the mark shall consist of a two dimensional graphic or
photographic reproduction as follows, namely:-

i. The reproduction furnished shall consist of three different view of the trade mark;
ii. Where, however, the Registrar considers that the reproduction of the mark furnished
by the applicants does not sufficiently show the particulars of the three dimensional
mark, he may call upon the applicant to furnish within two months up to five further
different view of the mark and a description by words of the mark;
iii. Where the Registrar considers the different view and/or description of the mark
referred to in clause (ii) still do not sufficiently show the particulars of the three
dimensional mark, he may call upon the applicant to furnish a specimen of the trade
mark. Further three dimensional marks have also been defined under the revised draft
manual dated January 23, 2009.

In the case of three dimensional marks, the reproduction of the mark shall consist of a two
dimensional or photographic reproduction17.

Where appropriate, the applicant must state in the application form that the application is for
a shape trade mark. Where the trade mark application contains a statement to the effect that it
is a three dimensional mark, the requirement of Rule 29(3) will have to be complied with
Further a single multiclass application can be filed in India in respect of all the international
classes.

The two main requirements of a trademark are that it must be distinctive (adapted to
distinguish the goods/services of the applicant from that of others) and not deceptive.
Therefore while selecting a trademark, words that are directly descriptive of the goods,
common surnames or geographical names should be avoided as these confer weaker
protection to the proprietor even if registered. Now the concept of "well known mark" has
been introduced after the last amendment and Section 218(zg) defines a well-known mark as:

"Well-known trademark, in relation to any goods or services, means a mark which has
become so to the substantial segment of the public which uses such goods or receives such

17
as required in Rule 29(3).
18
Section 2 (zg)

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services that the use of such mark in relation to other goods or services would likely to be
taken as indicating a connection in the course of trade or rendering of services between those
goods or services and a person using the mark in relation to the first mentioned goods or
services." While determining whether the mark is well-known mark, the registrar will take in
to consideration while determining that the mark is a well-known mark.

a) The knowledge or recognition of the alleged well known mark in the relevant section
of the public including knowledge obtained as a result of promotion of the trademark.
b) The duration, extent and geographical area of any use for that trademark.
c) The duration, extent and geographical area for any promotion of the trademark
including advertising or publicity and presentation at fairs or exhibition of the goods
or services in which the trademark appears.
d) The duration and geographical area of any registration of any publication for
registration of that trademark under this Act to the extent that they reflect the use or
recognition of that trademark.
e) The record of successful enforcements of the rights in that trademark, in particular the
extent to which the trademark has been recognized as a well-known trademark by any
Court or Registrar under that record.

Whereas a trademark has been determined to be well known in at least one relevant section of
the public in India by any court or Registrar, the Registrar shall consider that trademark as a
well-known trademark for registration under this Act. "Relevant section of Public" may be
actual or potential consumers of, persons involved in channels of distribution of or business
circles dealing with the type ofgoods or services to which the mark is applied. The Registrar
is not required to consider the following facts while determining a well-known trademark.

a) The Trademark has been used in India

b) The Trademark has been registered
c) The application for registration of the Trademark has been filed in India.
d) The trademark is well known in or has been registered in, or in respect of which an
application for registration has been filed in any jurisdiction other than India or
e) The trademark is well known to the public at large in India.

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Priority

For claiming a priority from an application filed in United States a corresponding application
should be filed in India within 6 months of date of filing of original application. Trademark
Applications in India can be classified under following categories depending upon their
priority claim. 1. Ordinary trade mark application without any priority 2. Conventional trade
mark application- has to be filed within 6 months from date of filing of conventional
application In case of conventional trademark application; certified copy of the priority
document has to be filed within 2 months from the date of filing of application in India.
Besides above trademark applications, there are also certification trademarks and collective
trademarks that are registrable in India.

Certification Trade Marks Registration

It is mandatory to supply the Regulations governing use of mark, including provisions as to

the cases in which the Applicant is to certify goods or services and to authorise the use of the
certification trade mark19. The regulations governing the certification mark shall specify:

a) Description of the Applicant;

b) Nature of Applicant business;
c) The particulars of infrastructure like R&D, technical manpower support;
d) The applicants competence to administer the certification scheme;
e) The applicants financial agreement;
f) An undertaking from the application that there will be no discrimination of any party
if they meet the requirements set down in the regulations;
g) The characteristics the mark will indicate in the certified goods on in relation to the
rendering of certified services;
h) The manner of monitoring the use of the mark in India;

The Applicant must not be carrying the business in respect of which the certification mark is
sought to be registered.

19
along with Application in triplicate on Form TM-49

Page | 20
Various Grounds for refusal

Absolute grounds

Section 9 of the Trademarks Act, 1999 sets out the absolute grounds for refusal of
trademarks, which can be grouped under following heads:

a) Trademark is devoid of distinctive character;

b) Trademarks that are descriptive;
c) Trademarks likely to deceive of cause confusion;
d) Trademarks or signs that are customary in current language and in the bonafide and
established and customary practice of the trade;
e) Trademarks comprising scandalous or obscene matter or likely to hurt religious
susceptibilities in India;
f) Trademarks consisting of shape which are purely functional or are necessary to obtain
a technical result or give substantial value to the goods; or
g) Trademarks whose use is prohibited under Emblems and Names (Prevention of
Improper Use) Act, 1950.

Prohibition

Section 13 of the Trademarks Act, 1999 prohibits registration of any word as trademark
which is:

a) Commonly used and accepted name of any chemical element or any chemical
compound (as distinguished from mixtures) in respect of a chemical substance or
preparation; or
b) Declared by the World Health Organization and notified as such by the Registrar, as
an International non-proprietary names.

Relative grounds of refusal

Section 11 of the Trademarks Act, 1999 sets out the relative grounds for refusal of
trademarks, which can be grouped under following heads:

a) identical or similar to a previous mark with and/or without similar or identical goods;
b) Prohibition of use of the trademark under passing off or law of copyright;

Page | 21
Statutory defence available under the Act

 For registration
a) Honest concurrent use;
b) Acquiescence; or
c) Prior user
 Against Injunction suit or criminal matters
a) Use in accordance with honest practices in Industrial or commercial matters;
b) Parallel Imports;
c) Fair use in description of the goods or services; or
d) Generic ness.

Special Considerations in case of well-known mark

As per Section 11 of the Trademarks Act, while considering an application for registration of
a trademark and opposition filed in respect thereof the Registrar shall

a) Protect a well-known trademark against the identical or similar trademark.

b) Take into consideration the bad faith involved either of the applicant or the opponent
affecting the rights relating to the trade mark. However this provision shall not affect
the trademark if it trademark has been registered in good faith disclosing the material
information to the Registrar or where right to a trademark has been acquired through
use in good faith before the commencement of this Act.

Opposition (before the Registrar) and Cancellation (before the Registrar as well as
Appellate Board)

 Opposition can only be done after publication of the trademark and within 3 months
of date of availability of Journal. One month extension is available if sought before
the expiry of 3 months’ time.
 Cancellation on the ground of non-use for a period of 5 years and 3 months and proof
of intention on part of the registered proprietor not to use the trademark at the filing
date and nonuse till the cancellation petition.
 Before the Courts: Ex-parte Injunction, Permanent Injunction, Anton Pillar Order, and
/or Arrest and Seizure of goods (irrespective of registration).

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Assignment/ license

Trademarks are now recognized as a "movable property" under the Indian law and can be
therefore assigned/ licensed. A trademark can be assigned with or without the goodwill
attached to it.

Renewal

The trademarks can be renewed perpetually, are renewable for a period of 10 years on
payment of prescribed fees. Express processing: Under Indian trademark law now it is
possible to expedite the various proceeding Home Page. Search, examination etc. by filing a
request with prescribed fees. Indian Trademarks laws are at par with the International laws
and have stringent procedures for safeguarding and protecting interest of the proprietor of
mark20.

CASE LAWS

In case of Daimler Benz Akietgesellschaft v.Hybo Hindustan21, the Court considering the
Plaintiff’s mark “BENZ” to be well known on account of trans- border reputation and
goodwill granted injunction against the defendants who were using the impugned mark for
selling their apparel.

In case of Whirlpool Co &Anr v. N R Dongre,22 the Whirlpool had not registered their
trademark in India. However, by virtue of use and advertisements in International magazines
and worldwide reputation the Plaintiff successfully prevented the defendant from infringing
its trademark in India.

Protection of Domain Names under the Trademark Law: With the increased use of
technology and internet, domain names are serving as business identifiers and accordingly
registration of domain names has been gradually increasing.

20
Venkateswaran on Law of Trademark and Passing off by KapilWadhwa, Dr. Abhishek Manu Singhvi
21
AIR 1994 Del 239
22
(1996) PTC 415 (Del)

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The Indian Judiciary extended trademark protection to domain names in the case of Satyam
Infoway Ltd. Vs.Sifynet Solutions Pvt. Ltd.23, In the said case, the Court made the following
observation:

“Original role of a domain name was no doubt to provide an address for computers on the
internet. But the internet has development from a mere means of communication to a mode of
carrying on commercial activity. With the increase of commercial activity on the internet, a
domain name is also used as business identifier. Therefore, the domain name not only serves
as an address for internet communication but also identifies the specific internet site. In the
commercial field, each domain name owner provides information/services which are
associated with such domain name. Thus domain name may pertain to provision of services
within the meaning of Section 2(z)”

Remedies against Trademark Infringement and Passing-Off: In cases of trademark

infringementand passing off, the Judiciary apart from granting injunction or ex-parte
injunction for immediaterelief has passed orders like Anton Piller Orders, Mareva Injunction
and John-Doe Orders foraccording relief to the aggrieved.

Anton Piller Orders- One of the former cases, wherein the Judiciary recognized passing of
Anton Piller order was the case of National Garments vs National Apparels, Ernakulam24.
In the said case, the Court observed that Anton Piller Order can be granted for inspection of
the defendant's premises without prior warning and discovery of his records and further stated
that Anton Pillerorder is similar to the ex parte interlocutory in order to take an inventory of
the articles etc. passed in an ordinary suit.

Mareva Injunction- It was first recognized by the Judiciary in the case of Kloninkijke
Philips Electronics v. Overseas Business Corporation &Ors.25, In this case the plaintiff was
manufacturing consumer goods under its registered trademark PHILIPS. Thereafter, the
defendants were trying to export a consignment of televisions bearing the mark PHILIBS.

The Court held that there was a similarity of marks which was likely to cause confusion in
the minds of the public and accordingly Mareva Injunction was granted whereby a local

23
AIR 2004 SC 3540

24
AIR 1990 Ker 119
25
(2001)

Page | 24
Commissioner was appointed to inspect the premises of the defendant and empowered to
seize the infringing goods.

John Doe Orders- In the case of Ardath Tobacco Company Limited v Bhai26, the Indian
Court for the first time passed John Doe Orders restraining named defendant and unknown
infringers. The Court passed the order, pursuance to which search and seizure was conducted.

In a landmark case, MilmetOftho Industries &Ors v. Allergan Inc, the Supreme Court
extended the protection guaranteed under trademark law in India to a well-known foreign
brand. The court restrained an Indian company from using the mark OCUFLOX. The court
judgment was given irrespective of the fact that the U.S. Company has neither used the mark
in the Indian market, nor the mark was registered in India.27

Justice S.N. Variava referred to earlier judgments of the Supreme Court in the famous Cadilla
Healthcare case where the Court held that in the fields of healthcare and medicine, all
possibilities that may create any confusion in a consumer‘s mind should be avoided. Justice
Variava held that all possibilities of deception and confusion should be prevented; keeping in
mind that public interest is not jeopardized. Also, doctors, medical professionals, other
professionals and companies in the healthcare industry were advised to keep themselves
updated about latest developments in medicine, attend medical conferences, symposiums and
lectures on regular basis and share such knowledge in the field. The court further stated that
permission for registration of a trademark should be granted based on who entered first in the
market. The marks are identical in this case. The respondent‘s pharmaceutical product was
already being advertised across the world. Finally, the court held that the respondent in this
case was the first enter to the market and adopt the mark. Also, the fact that the respondent
has not used the mark in India is insignificant, if they were the first to enter the world market.

In a case law of Merz & Krell v Deutsches Patent28, the court held that the trade mark law
constitutes an essential element in the system of competition in the modern world. “In that
system, each undertaking must, in order to attract and retain customers by the quality of its
goods or services, be able to have registered as trademarks signs enabling the consumer,
without any possibility of confusion, to distinguish those goods or services from others which
have another origin.”

26
CS (OS) 141/2004
27
Law Relating to Intellectual Property Rights by Dr. M.K Bhandari
28
([2001] E.C.R. I-6959)

Page | 25
In case of Lloyd L.J. in Whirlpool v Kenwood29, If the law of trade mark can be summarised
in two words by virtue of which a trade mark must be registered or refused, they are
Distinctiveness and Similarity, each of which must be considered separately in making the
global assessment necessary to decide whether there is a sufficient link between two
trademarks to confuse an average person so that the mark can be refused or not so that the
mark can be registered. “A lesser degree of similarity to a more strongly distinctive mark may
be just as objectionable under Community trade mark law as a greater degree of similarity to
a less strongly distinctive mark.”

There are characteristics that the basic form of application should contain. “The court has
consistently held that the graphic representation must enable the sign to be represented
visually, particularly by means of images, lines or characters, so that it can be precisely
identified. In order to fulfil that function, such a representation must be clear, precise, self-
contained, easily accessible, intelligible, durable and objective as held in case of Dyson Ltd v
Registrar of Trade Marks30.

While refusing a mark it was held: “In the absence of any additional element whether graphic
or made up of some distinctive feature, the marks sought lacked any fanciful element and did
not present the minimum degree of distinctive character required, given that they are
understood by the public merely as indications of the type and quality of the goods and
services covered and not as marks fulfilling the function of indicating the commercial origin.
This perception of the marks sought in a descriptive sense is not prevented by the
juxtaposition of the terms that make up the said marks, this technique being current and usual
in the areas of advertising and marketing.”- As held in case of CeWe Color v OHIM.31

The ways for determining distinctiveness has been well defined in the case of Norma
Lebensmittelfilialbetrieb v OHIM32, “For a finding that there is no distinctive character, it
is sufficient that the semantic content of the word mark in question indicate to the consumer a
characteristic of the product or service relating to its market value which, whilst not specific,
comes from promotional or advertising information which the relevant public will perceive at
first glance as such, rather than as an indication of the commercial origin of the product or
service in question.”

29
[2009] EWCA Civ 753
30
[2007] 2 C.M.L.R. 14)
31
[2006] E.T.M.R. 34
32
[2004] E.C.R. II-1915

Page | 26
“The distinctiveness of a trade mark within the meaning means that the mark in question
makes it possible to identify the product or the service for which registration is sought as
originating from a given undertaking and therefore to distinguish the product or service from
those of other undertakings and, therefore, is able to fulfil the essential function of the trade
mark.” As held in this case of Cargo Partnerv OHIM33.

33
[2006] E.T.M.R. 35)

Page | 27
 BIBLOGRAPHY

BOOKS REFERRED

 Kailasam and Vedaraman Law of Trademarks and Geographical-indications

 Act-Intellectual Property Rights (Pocket Size Edn.)
 Intellectual Property Rights in India by VK Ahuja
 Venkateswaran on Law of Trademark and Passing off byKapilWadhwa, Dr. Abhishek
Manu Singhvi
 Law Relating to Intellectual Property Rights by Dr. M.K Bhandari

JOURNALS REFERRED

 India Law Journal

 Indian Society of International Law
 Journal of Law and Economics

WEBSITES VISITED

 www.wikipedia.org
 www.cll.com
 www.tm-india.com
 http://www.academia.edu/7795675/TRADEMARK_LAW_IN_INDIA_-
A_Critical_and_Comparative_Study
 www.thomsonreuters.com
 www.indlii.org

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