The Lanham Act provides:

• The term trademark includes any word, name,

symbol, or device, or any combination thereof
• (1) used by a person, or
• (2) which a person has a bona fide intention to use in
commerce and applies to register on the principal
register established by this chapter,
• to identify and distinguish his or her goods, including
a unique product, from those manufactured or sold by
others and to indicate the source of the goods even if
that source is unknown
• 15 U.S.C. § 1127. The statute defines the term
“service mark” similarly, except that service
marks are used to identify and distinguish
services, not goods. Most people use the term
“trademark” to indicate either a trademark or a
service mark, and we will do the same throughout
this Chapter. A trade name, on the other hand, is a
name used to identify a person’s business. Trade
names are not protected by traditional trademark
law, except to the extent that they are used as a
trademark.
• Section 2(1)(e) defines certification trade mark
to mean “a mark capable of distinguishing the
goods or services in connection with which it is
used in the course of trade which is certified by the
proprietor of the mark in respect of origin,
material, mode of manufacture of goods or
performance of services, quality, accuracy or other
characteristics from goods or services not so
certified and registrable as such under Chapter IX
in respect of those goods or services in the name
as proprietor of the certification trade mark, of that
person”.
• Sections 69 to 78 of the Act deal with registration
of certification trade mark. The purpose of a
certification trade mark is to show that the goods
or services in respect of which the mark is used
have been certified by some competent person in
respect of certain characteristics such as Origin,
mode of manufacture, quality etc
• Example: Woolmark, ISI, CSA
Certification Marks
• Section 70 of the Act makes it clear that the
proprietor of a certification trade mark should not
himself carry on a trade in the goods of the kind
certified or a trade of the provision of services of
the kind certified. Besides, the certifying
authority who may be an individual or a company
or association of persons should be competent to
certify the goods in respect of origin, material,
mode of manufacture or performance of services,
quality, accuracy or other characteristics
• Application for registration should be made on
form TM-4 or TM-65, TM-68 or TM-69 as the
case may be accompanied by prescribed fee.
• b) Draft regulation in triplicate to be deposited
under section 64 along with TM-49.
• c) File a Statement of Case in triplicate under rule
136
• A certification mark is defined in Section 50(1) of the CDPA
1988 as:
• “A certification mark is a mark indicating that the goods and
services in connection with which it is used are certified by the
proprietor of the mark in respect of origin, material, mode of
manufacture of goods or performance of services, quality,
accuracy or other characteristics.”
• The main feature of a certification mark is that it is used not by the
proprietor of the mark but instead by his authorised users for the
purpose of guaranteeing to the relevant public that goods or
services possess a particular characteristic. The proprietor’s mark
certifies the presence of the characteristic and will authorise the
use of the mark to anyone who can demonstrate that the goods and
services for which it will be used have that characteristic.
– cancellation of certification mark: allowing use of
the mark in contravention of the rules or
regulations governing it.
– Fines for failure to enforce compliance with rules
and regulations governing use of the mark when
such failure results in damage to consumers.
• . “Collective mark” is defined to mean a trade mark
distinguishing the goods or services of members of an
association of persons (not being a partnership within the
meaning of Indian Partnership Act, 1932 ) which is the
proprietor of the mark from those of others”- section
2(1)(g).
• Example: CA, CS
• Collective trademarks differ from certification marks. The
main difference is that collective trademarks may be used
by particular members of the organization which owns
them, while certification marks may be used by anybody
who complies with the standards defined by the owner of
the particular certification mark.
• the collective mark must be capable of being represented
graphically and meet other requirements as are
applicable to registration of trade marks in general. The
points to be noted by the Examiner in such cases are –
• (1) The collective mark is owned by an association of
persons not being a partnership.
• (2) The collective marks belong to a group and its use
thereof is reserved for members of the group.
• (3) The association may not use itself the collective mark
but it ensures compliance of certain quality standards by
its members who may use the collective mark.
• (4) The primary function of a collective mark is to
indicate a trade connection with the association or
organization who is the proprietor of the mark.
• Application for registration as collective mark should be made on form TM-3.
Where appropriate form TM-66 , 64 or TM-67 will be used. The draft
regulations governing the use of the collective mark is to be submitted with the
application on form TM-49. It shall include –
• a) the name and object of association
• b) the persons authorized to use the mark and the nature of control the applicant
would exercise over the use
• c) The condition of membership of association
• d) Conditions of use of the mark
• e) Sanctions against misuse
• f) Procedure for dealing with appeals against the use of collective marks
• The Rules 127 to 133 of the Trade Marks Rules, 2002 make special provision in
this context. It is expressly provided that provisions of the Trade Marks Act will
apply to collective marks subject to the special provisions contained in Chapter
8. Accordingly, the examination of an application for registration of collective
mark will also be subject to the same standards as applicable to registration of
trade mark in general subject to the additional requirements to scrutinize the draft
regulations governing use of the collective mark and statement of case filed
under rule 129. In the case of acceptance of the application subject to conditions
or limitations the provisions of rule 38(4), 39, 40, 41 and 42 will be applicable.
• A collective mark is defined in Section 49(1) of the CDPA 1988
as:
• “A collective mark is a mark distinguishing the goods or services of
members of the association which is the proprietor of the mark from
those of other undertakings.”
• The main feature of a collective mark is that it is used as an
indication to the relevant public that goods or services originate
from a member of a particular association. It is therefore a sign of
membership.
• Certification and collective marks therefore differ from “ordinary”
trade marks because an ordinary trade mark is one that distinguishes
the goods and services of one particular trader (a single trade
source) from those of other traders.
• The Difference Between a Trade Name and a Trademark
• a trade name is the official name under which a
company does business. It is also known as a “doing
business as” name, assumed name, or fictitious name. A
trade name does not afford any brand name protection or
provide you with unlimited rights for the use of that
name. However, registering a trade name is an important
step for some – but not all – businesses
• An important reason to distinguish between trade names
and trademarks is that if a business starts to use its trade
name to identify products and services, it could be
perceived that the trade name is now functioning as a
trademark, which could potentially infringe on existing
trademarks.
• Brand management is a communication function
that includes analysis and planning on how that
brand is positioned in the market, which target
public the brand is targeted at, and maintaining a
desired reputation of the brand. Developing a
good relationship with target publics is essential
for brand management. Tangible elements of
brand management include the product itself;
look, price, the packaging, etc. The intangible
elements are the experience that the consumer
takes away from the brand, and also the
relationship that they have with that brand. A
brand manager would oversee all of these things.
• Hislop defined branding as "the process of creating
a relationship or a connection between a
company's product and emotional perception of
the customer for the purpose of generation
segregation among competition and building
loyalty among customers." In 2004 and 2008,
Kapferer and Keller respectively defined it as a
“fulfillment in customer expectations and
consistent customer satisfaction”
• Brand orientation refers to "the degree to which the
organization values brands and its practices are oriented towards
building brand capabilities” (Bridson & Evans, 2004). It is a
deliberate approach to working with brands, both internally and
externally. The most important driving force behind this
increased interest in strong brands is the accelerating pace
of globalization. This has resulted in an ever-tougher
competitive situation on many markets. A product’s superiority
is in itself no longer sufficient to guarantee its success. The fast
pace of technological development and the increased speed with
which imitations turn up on the market have dramatically
shortened product lifecycles. The consequence is that product-
related competitive advantages soon risk being transformed into
competitive prerequisites. For this reason, increasing numbers of
companies are looking for other, more enduring, competitive
tools – such as brands.
• The brand curation organizes and provides sense to every
message or image delivered intentionally or unintentionally by a
company. The person in charge of it is called Brand Curator and
it is responsible for cooperating with the company in the
conscious management of the image and culture attached to it.
• The brand curation understands that the brand community
members (traditionally called clients or users) are an active part
of the brand image and therefore any action proposed by the
company has a global effect amplified and influenced by them.
It works from the knowledge about nowadays successful brands
profiles, that are those who are really aware about the culture
that they represent, and are able to incorporate the resonances
about the brand in its environment knowing that it is a
continuous and moving transformation process, a work in
progress.
 Merchandising
• In marketing, one of the definitions of merchandising is
the practice in which the brand or image from one product
or service is used to sell another. Trademarked brand
names, logos, or character images are licensed to
manufacturers of products such as toys or clothing, which
then make items in or emblazoned with the image of the
license, hoping they'll sell better than the same item with
no such image. For the owners of the IP in question,
merchandising is a very popular source of revenue, due to
the low cost of letting a third party manufacture the
merchandise, while the IP owners collect the
merchandising fees.
 Well-known marks
• Well-known marks are marks generally acknowledged to be
marks which have a high degree of recognition and reputation in
the areas of trade of the proprietors of such marks, and in many
cases beyond the areas of trade of the proprietors of such marks.
• Well-known marks are critical business assets which can be used
and traded just like any other assets. As such, these critical
business assets deserve the fullest and widest possible protection
in order that mark owners may fully exploit the value of such
well-known marks.
• This need for specific protection for well-known marks is
recognised in various international obligations which set out the
principles for the protection of well-known marks, with individual
countries setting out the extent of which such rights are to be
protected.
• Whether a mark is well-known is a factual question. The factors to consider in
determining whether a mark is well-known generally falls within the following
scope:-
• the degree of knowledge or recognition of the mark in the relevant sector of the
public;
• the duration, extent and geographical area of any use of the mark;
• the duration, extent and geographical area of any promotion of the mark;
• the duration, extent and geographical area of any registrations to the effect they reflect
use or recognition of the mark;
• the record of successful enforcement of rights in the mark; and
• the value associated with the mark.
• Protection for well-known marks is not confined to use of similar marks used for
goods or services identical or similar to those of the owner of the well-known mark,
but also to use in relation to goods or services which are not identical or similar to
those of the owner of the well-known mark if such use would indicate a connection
exists between such goods or services and the owner of the well-known mark.
• While many countries recognise unregistered well-known marks, it is however
advisable to seek registration of well-known marks, taking into account that there may
be extended forms of protection for registered well-known marks in certain countries.
• Many countries protect unregistered well-known marks in accordance with their
international obligations under the Paris Convention for the Protection of
Industrial Property and the Agreement on Trade-Related Aspects of Intellectual
Property Rights (the TRIPS Agreement). Consequently, not only big companies
but also SMEs may have a good chance of establishing enough goodwill with
customers so that their marks may be recognized as well-known marks and
acquire protection without registration. It is, nevertheless, advisable to seek
registration, taking into account that many countries provide for an extended
protection of registered well-known marks against dilution (Art. 16.3 TRIPS),
i.e., the reputation of the mark being weakened by the unauthorized use of that
mark by others.
• You should be aware of the fact that a number of trademark laws merely
implement obligations under Article 16.3. of the TRIPS Agreement and protect
well-known registered trademarks only under the following conditions:
• that the goods and services for which the other mark is used or is seeking
protection are not identical with or similar to the goods for which the well-
known mark acquired its reputation
• that the use of the other mark would indicate a connection between these goods
and the owner of the well-known mark, and that his interests are likely to be
damaged by such use.