Introduction to Trademark Law
Intellectual property rights allow people to claim ownership rights over the results of their creativity and innovative activities in the same way that they can own physical property. Intellectual property is generated by human labour and therefore it is a multiple bound by changes. The four main types of intellectual property are patents, trademarks, designs, and copyrights. This article will deal with the trademark law, which is an important aspect of intellectual property.
Indian trademark law statutorily protects trademarks as per the Trademark Act, 1999 and also under the common law remedy of passing off. Statutory protection of trademark is administered by the Controller General of Patents, Designs and Trade Marks, a government agency that reports to the Department of Industrial Policy and Promotion (DIPP), under the Ministry of Commerce and Industry. It also deals with the rights of the holder of the trademark, penalties for infringement, remedies for the damaged as well as modes of transference of the trademark.
The trademark law deals with the mechanism of registration, protection of trademark and prevention of fraudulent trademark. The trademark law also provides for the rights acquired by registration of trademark, modes of transfer and assignment of the rights, nature of infringements, penalties for such infringement and remedies available to the owner in case of such infringement.
What is a Trademark?
Meaning of Trademark: – Trademark is defined in the Trademark Act, 1999 under Section 2(1) (i) (viii) (zb) as, “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 and may include the shape of goods, their packaging and combination of colours.” Such a mark may include numerous things such as signatures, names, labels, headings etc.
A trademark can be a term, sign, symbol, device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colors or any such combinations or even a graphic that is used to identify a firm, its products, or its services from those of its rivals. For example, a brand, product, company name, or logo. This makes it possible for customers to choose, buy, and enjoy goods and services based on the precise qualities and attributes that the trademark’s owner/user has promised. The trademark prevents unauthorized use of an individual’s or company’s product or service without their permission.
A trademark can be made up of logos, images, words, short phrases, colours or even a compound of all of these. The most used are words and images, however, other distinctive symbols may also be used if they are capable of graphical representation.
For example, the well-known luxury brand Louis Vuitton has gained a trademark for its check pattern known as the Damier pattern, the infamous confectionery brand Cadbury’s has a purple trademark for chocolate, even though it is hard to get trademark for single-coloured products. Getting a trademark is very difficult. And Coca-Cola has a trademark for the design of its bottle. Some more examples of trademarks are Dettol, Rolex, Nestle, Sun Pharma, Theobroma, Mont Blanc etc.
Detailed Definition and Features of Trademark
As per Section 2(1) (i) (viii) (zb) of the Trade Marks Act, 1999, ‘trademark’ means a mark capable of being graphically represented and capable of distinguishing the goods or services of a person from others, and may include the size of the goods or a combination of their packaging and colours.
- A trademark must be a mark that includes an instrument, title, brand, label, stamp, signature, word, letter, name, numeral, packaging or combination of colours or any combination of the above characteristics;
- It should be in the nature of being represented graphically;
- It should serve the purpose of distinguishing the products of one manufacturer from another;
- Size, colour combination and packaging can be protected as trademarks;
- The use or proposed use must be in relation to any particular goods or services;
- It should be able to present the relationship of an individual/group of persons with the manufacture of goods or the provision of services;
- The trademark may be protected by means of continued use or by registration under the Trade Marks Act, 1999; and
- A trademark protected through use is associated with the goodwill of the enterprise that is obtained through continued use. On the other hand, protection can be provided under the 1999 Act even for the intend of use.
Fundamental Concepts of Trademarks
The primary function of a trademark is to highlight the quality of the product/service to a customer/potential customer. Trademarks help to identify a company’s products. It takes years to build goodwill. A well-recognized trademark signifies the assurance given by a company to its customers. It can tell almost everything about a manufacturer.
Trademarks include such functions as: –
- To identify the origin and source for the quality of a product;
- Ensures uniform standard in quality;
- Provides advertisements to the products effectively; and
- Builds goodwill and image for the product.
A trademark performs the following functions: –
- Renders an exclusive right on the owner of the mark to use the trademark to identify good produced or services rendered by it;
- Prevents others from making fraudulent use of the mark;
- A trademark owner can commence legal proceedings of trademark infringement for preventing unauthorized use of his registered mark by a third party;
- An unregistered trademark can be protected under the common law principle of passing off;
- Prevents unfair competitors from the usage of similar or deceptively similar marks; and
- Protects the skill and intellect of any company.
Currently, the Trademark law in India is primarily governed by the Trademark Act, 1999 and the Trademark Rules of 2017 framed under the Act. The Act and Rules enumerate the procedural aspects of trademark filing, examination, publication, opposition, registration, renewal, rectification and removal of a trademark. Similar to Patents, the Chief Administrator of the trademark system in India is the office of the Controller General of Patents, Designs and Trademarks (‘CGPDTM’) functioning under the aegis of the Department of Industrial Policy and Promotion (‘DIPP’), Ministry of Commerce and Industry.
The whole process of successful registration of a trademark involves several stages- right from trademark search to trademark registration and further renewal. Each stage involves fulfillment of procedural requirements and documentation.
Evolution of Trademark Law in India
India borrowed the British Trademark Act, 1938 and prepared the first Act on the subject as Trademark Act of 1940. Independent India moulded the Trade & Merchandise Mark Act, 1958. The Act is now operative as Trademark Act, 1999 which came into force with effect from 30th of December 1999.
The rights that trademark presently affords were protected by common law and equity principles prior to the establishment of laws governing trademark law in India. To stop trademark infringement, the trademark owner had to pursue the common law passing off remedy. The adoption of English laws for the Indian subcontinent prior to independence led to the subsequent enactment of a significant number of Indian laws. Similar regulation was first introduced in India after The English Act was passed in England in 1875.
Subsequently, the Bombay Chamber of Commerce requested the introduction of a bill in the Legislative Council like the English Act, 1875. The government considered the matter and introduced the Trademark Bill in 1879. Unfortunately, the bill did not find much support or success. So, there was no further procession.
However, the need arose again in the 19th century for trademark practice and laws specifically for the practice of trademarks in India. This requirement came into force in the Trademark Act of 1940. This piece of legislation followed the provisions of the UK Trademark Act, 1938. Prior to the enactment of this law, trademark disputes were handled in the light of Section 54 of the Specific Relief Act of 1877.
To bridge the gap in the Trademark Act, 1940, the Trade and Merchandise Marks Act 1958 was born. Trademark provisions in IPC and CrP.C. were also amalgamated in the Trade and Merchandise Marks Act, 1958.
This previous Act got replaced with the Trademark Act, 1999 by the government of India by complying it with TRIPS (Trade-related aspects of intellectual property rights) obligation recommended by the World Trade Organization. The aim of the Trademark Act is to grant protection to the users of trademark and direct the conditions on the property and also provide legal remedies for the implementation of trademark rights.
The latter currently regulates trademark practice in India in line with the Trademark Rules, 2002. The intention behind the enactment of the 1999 Act was to address the following. The scarcity born on globalization and rapid technological development. The Indian trademark practice is now fully compatible with the TRIPS Agreement due to the 2002 amendment.
The Trademark Act, 1999 gives the right to the police to arrest in cases of infringement of the trademark. The Act gives a complete definition for the term infringement which is frequently used. In Trademark Act, it provides punishments and penalties for the offenders. It also increases the time duration of registration and also registration of a non-traditional trademark.
What are the types of trademarks?
- Service Mark;
- Collective Mark;
- Certification Mark;
- Trade Dress.
Detailed Explanation of the above-mentioned types of trademarks: –
A firm may use a logo or a combination of letters and numbers to symbolise its goods and services and assert its ownership of a word or design. Trademarks can be registered under many different categories, including product, service, collective, certification, shape, sound, and pattern marks. Although there are many different types of trademarks, they all serve the same objective, which is to let customers recognise products and services coming from a particular manufacturer or service provider. We examine the various trademark kinds in the following.
There are basically four types of trademarks: –
- Service Mark: – A service mark is any word, name, symbol, device, or any combination used or intended to be used in commerce to identify and distinguish the services of one provider from those of others and to indicate the source of the services. It is basically useful in separating one service provider from another. Service marks do not cover physical goods but only the provision of services. Service marks are used to identify a service, as a trademark is used to protect the goods.
A service mark is generally adopted so that it can play an important role in the marketing, promotion and sale of a product or service, it also plays a role in reference to a particular quality or standard for which a service mark is used.
The service mark is denoted by the letter SM. “Mark” can sometimes be used to refer to both a trademark and a service mark, as the terms are almost but not completely interchangeable.
Service marks are used in many day-to-day services, some examples of them are as follows: –
- Management and Investment Services;
- Housing development services;
- Advertising promotion services;
- Speed reading instruction;
- Hotel and motel services; and
- Entertainment services rendered by individual, group, or theatre and many more services.
- Collective Mark: – A collective mark used by members of a co-operative union, union or other collective group or other group or organization to identify the source of goods or services. A collective mark means a mark used for goods and services with similar characteristics, which are traded jointly by one or more persons or by a legal entity without discrimination against other goods or services.
There are two types of collective mark or legal entity for discrimination against other goods or services of the same kind. They are as follows: –
- Collective Membership Marks: – These marks are not used to indicate the source of goods or services, but they indicate that the seller is part of a defined group.
- Collective Trademarks and Collective Service Marks: – These are used to indicate the source. Such collective marks are used by the group to indicate that the goods or services offered by each member of the group are the products or services of the group.
- Certification Mark: – A certificate is evidence or probable case that gives assurance that some act has been or has not been done or that some event has occurred or that some legal formality has been complied with. A certification mark is a mark that indicates that certain properties of the goods or services in respect of which the mark is used have been certified.
The registration of the certification mark is done in accordance with the Trademark Act 1994. An important requirement for registration of a certification mark is that the entity applying for registration is “competent to certify” the products concerned. Thus, the owner of the certification mark must be representative of the products to which the certification mark applies.
An authorized user of a certification mark is clearly compared to a license of a trademark under specific circumstances, namely unauthorized application of the mark to certain materials, restrictions on the importation of infringing goods, and disposal of infringing goods. A registered mark may have been assigned according to the registrar.
- Trade Dress: – Trade dress is a term that refers to both the individual components of a product or firm’s image as well as the overall impression that those components together generate. It describes the collection of factors that make up the appearance, feel, or environment of a product or business.
Trade Dress is an ineffective physical component. Trade dress can be simple colouring, surface ornamentation, or a general appearance. The Lanham Act may provide protection for trade dress. Every manufacturer should safeguard their trade dress because it is easily imitated.
Essentials of Trade Dress: –
- Anything that influences a brand’s overall appearance or general style on the market;
- The customer thinks that the primary indication of what distinguishes one brand or set of items from others is trade dress;
- The criteria for registering a trade dress are the same as those for registering a logo or mark. Size, colour, texture, graphics, design, form, packaging, and many other characteristics make up trade dress.
Importance of Registration of Trademarks
Trademarks are jurisdictional rights and like any other tangible assets, its also tangible in nature like, it can be licensed, sold, and purchased and can also be utilized as a security to obtain loan. Hence, such a tangible asset needs protection to keep acquiring economic benefits as long as the owner of such a mark wishes to.A registered trademark gives exclusive identity to one’s business and also safeguards their brand reputation. A trademark after registration can be used for 10 years before its renewal and hence, as long as the owner keeps renewing it on time, it can be used as long as the business of the trademark owner is alive.Only a registered trademark can file an infringement suit against any third party infringer who tries to infringe or pass off their own goods and or services by utilizing the reputation and the goodwill of another person’s registered trademark. The cost and time for registration of a trademark has ben reduced and also it is a one time expense. Now, the time required for registration ranges from 6 to 12 months and once its registered, it will remain valid for next 10 years.
With effect from 6 March 2017, the new trademark rules came into existence. The intention is to simplify the whole trademark registration process and make it hassle-free and quick. Some of the features of the new rules are sound marks are made registrable; 3D marks are made registrable; e-filing is promoted; provisions pertaining to the well-known mark; separate fees structure for an individual/startup/small enterprise and others; expedited processing of application; hearing via video conferencing; and the number of forms has been cut down to 8 from the existing around 75 forms.
Owner of the Trademark
A trademark protects its owner by guaranteeing them the exclusive right to use it to distinguish products or services or to allow other parties to do so in exchange for payment. The registered owner might use it as a tool to prevent unauthorised trademark usage by others. Section 28 addresses the privileges that registration confers: –
- A trademark registration is valid if the exclusive right to use the trademark in connection with the goods or services for which it is registered is granted to the certified owner of the trademark, and if the holder of the trademark is also given the right to pursue maintenance for trademark infringement; and
- If there are more than two people listed as certified trademark owners for the same or substantially identical trademark. The exclusive right to use each of those trademarks cannot be expected to be taken by one of those people as against other people only by trademark registration, unless their own rights are related to any conditions or limitations entered on the register. However, each of those people has the same rights as against other people.
Registration of Trademark under Trademark Law
Anyone claiming to be the trademark’s owner or who intends to use the trademark in the future may apply in writing to the relevant registrar in accordance with the established procedures. The application must include the name of the products, mark, and services, as well as the class of goods and services it belongs to, the applicant’s name and address, and the amount of time the mark has been in use. Here, the term “person” refers to a group of businesses, a partnership, a corporation, a trust, a state government, or the federal government.
Conditions for Registration of a Trademark in India under Trademark Law
Obtaining an online trademark registration is relatively simple provided you meet the requirements outlined below: –
- Name, nationality, and address of the applicant are necessary. Each partner’s details must be stated if there is any sort of cooperation or a business that has an LLP Incorporation;
- Information regarding the Goods and Services related to the registration must be included;
- Additionally, you must submit a soft copy of the trademark;
- The trademark must be translated if it is in a language other than English;
- If an application has already been submitted, specifics should be included; and
- If you want to take advantage of a less expensive and safer solution, the first date of trademark usage and expert consultation for trademark search may also be required.
Conditions for Cancelling an Indian Trademark Registration under Trademark Law
The Act’s unequivocal reasons for rejection of registration are listed in Section 9. Any trademark that falls under the criteria outlined in this section is ineligible for registration.
The following are the sole reasons for rejecting registration: –
- Trademarks without any distinguishing features;
- The quality, kind, amount, purpose, values, or geographic source of the given goods or services are identified by trademarks that only contain other indicators or trademarks in commerce;
- The term “trademark” also refers to signs or indications that are solely used in the trade and are regarded as standards in their respective fields;
- Trademarks appear in a way that tricks or confuses the public;
- Comparatively, trademarks comprise or contain material that may hurt the religious emotions of any group or segment of India’s population;
- trademarks that include or involve the most scandalous or graphic sexual content;
- If the Emblems and Names (Prevention of Improper Use) Act, 1950, prohibits the use or use of the name;
- Marks on the shape of the items that derive from the qualities of the products themselves make up trademarks;
- Trademarks are commodities that are required in order to achieve the intended technical result;
- Similar to how trademarks are made up of designs that give things considerable value;
- Trademarks can confuse the public since they are exact replicas of earlier equivalent trademarks for products or services;
- Trademarks that might unfairly benefit from being identical to or very similar to another well-known brand in India; and
- Additionally, trademarks may damage an Indian brand or logo’s unique identity or reputation if they were formerly well-known.
Well-known Trademark and Trans-border Reputation
The terms “Well-known Trademark” and “Principle of Trans-border Reputation” are recognised in India. A mark that has gained enough recognition among a sizable portion of the public who use such goods or receive such services to make it likely that the use of the mark in relation to other goods and services will be interpreted as indicating a connection between the two marks is considered to be a well-known trademark in relation to any goods or services.
In the historic case, the Apex Indian Court acknowledged and examined the notion of trans-border reputation. Whirlpool v. R. Dongre (1996) 5SCC 714 The “WHIRLPOOL” trademark was believed to have gained goodwill and repute in India. Despite there being no proof of any real sales, it was also claimed that Whirlpool Corporation had come to be identified with the mark “WHIRLPOOL” as a result of magazine advertisement circulation. Therefore, regardless of its actual usage or registration in India, it was determined that the trademark WHIRLPOOL had amassed a trans-border reputation that is protected there.
Legal Remedies against Infringement and/or passing off: –
The Trade Marks Act provides simultaneous civil and criminal remedies for passing off and trademark infringement.
Trademark infringement is a breach of the registered trademark owner’s exclusive rights to use the mark. A person who uses an identical, similar, or misleadingly similar mark to the registered trademark without the registered proprietor’s permission is said to be infringing on the trademark. However, it is important to remember that Indian trademark law, which is founded on common law principles, protects a prior user’s vested rights against a registered proprietor.
Common law tort known as passing off is used to protect unregistered trademark rights. Passing off basically refers to the misappropriation of party A’s reputation in its trademark by party B, who then falsely promotes themselves as party A’s affiliates or partners in order to harm party A’s reputation. The registration of a trademark is immaterial for a passing off action.
In India, there is no requirement for trademark registration in order to pursue a civil or criminal case for trademark infringement. In India, a combined civil action for passing off and trademark infringement may be brought.
It is important to note that trademark infringement is a criminal offence for which infringers may face legal action. These techniques for enforcement are anticipated to increase the protection of marks in India and decrease trademark infringement and violation.
Designation of Trademark
The trademark is identified by: –
- Unregistered trademarks are denoted by the symbol TM. It serves to market or brand products;
- SM (used for a service mark that is not registered. It is employed to market or brand services; and
- R (letter R is encircled by a circle and used for registered trademark) (letter R is surrounded by a circle and used for registered trademark).
Case Laws under Trademark Law in India
1. Laxmikant V.Patel vs Chetanbhat Shah & Anr AIR 2002 SC 275
The Supreme Court has summed up the purpose of trademark law in these words: –
“The law does not permit anyone to conduct his business in a manner that may persuade customers to believe that goods or services belonging to someone else belong to him or are related to him. There are two reasons: –
- Honesty and fairness should be basic policies in the business world;
- When a person adopts or intends to adopt a name in relation to his business or services that already belongs to someone else, this creates confusion and is likely to turn someone else’s customers and clients to his and result in damage.