semvi.project.ipr.57.shreyas shrivastava

8/12/2019 Semvi.project.ipr.57.Shreyas Shrivastava

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TTRADERADEMMARKARKLLAWAWININIINDIANDIA

SSUBMITTEDUBMITTEDTTOO::

MMRR. A. AMRENDRAMRENDRAKKUMARUMARAAJITJIT

(F(FACULTYACULTYFORFORIINTELLECTUALNTELLECTUALPPROPERTYROPERTYRRIGHTSIGHTS))

SSUBMITTEDUBMITTEDBYBY::

SHREYASSHREYASSHRIVASTAVASHRIVASTAVA(R(ROLLOLL. N. NOO. 47). 47)

66THTH S SEMESTEREMESTER..

SSUBMITTEDUBMITTEDONON::22!M"#$%& 2''

HHIDAYATULLAHIDAYATULLAHNNATIONALATIONALLLAAUUNIVERSITYNIVERSITY&& RRAIPURAIPUR..


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SSCOPECOPE

'his article provides a critical reassessment the 'rade (ark law regime prevailing in India

especially after the coming into force of the 'rade (arks Act! )***.

RRESEARCHESEARCHMMETHODOLOGETHODOLOG

'he researcher has followed the doctrinal method for research purposes. 'he research

is "ased on secondary and electronic sources. Literature review has "een done extensively in

order to make a comprehensive presentation. +lectronic media! i.e. the Internet also has "een

one of the main sources of research.

TTA!LEA!LEO"O"CCONTENTSONTENTS

**


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Li#t $% A&&re'iati$n# '

Intr$du(ti$n )

Trade Mark* C$n(e+ti$n and De%initi$n )

E'$,uti$n -

Indian Su&*($ntet /

Trade Mark# A(t0 )111 2

Trade Mark C$m+ari#$n in India 3

E##entia,# 3

Remed4 5 Pr$te(ti$n 6nder Indian Law 7

C$n(,u#i$n 1

!i&,i$8ra+94 ):

***


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LLISTISTO"O"AA!!RE;IATIONS!!RE;IATIONS

AI, All India ,eporter

-al -alcutta/olkata

-o. -ompany

edn. +dition

Id./Ibid Ibidem

Ltd. Limited

p. pp. Page Pages

para. Paragraph

,ep. ,eprint

upp upplement

vs./v. Versus

*+


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Intr$du(ti$n

A trade mark is a sign that individualises the goods or services o a given enter!rise and

distinguishes them rom its com!etitors."#

'o the common man the concept of trademark is a recent phenomenon. 0ut contrary to this

perception! they are of ancient origin. 'hey existed even as long as 1222 years ago when

Indian craftsmen used to engrave their signatures on their artistic creations "efore sending

them to Iran. Later on! over )22 different ,oman pottery marks were in use! including the

3ortis "rand that "ecame so famous that it was copied and counterfeited. 4ith the flourishing

trade in the middle5ages the use of trademarks increased. And now with the effect of

glo"alisation the awareness and importance of trademarks knows no "ounds. It is due to the

increased competitiveness of the companies operating in different countries of the world that

the trade marks has gained value more than any other form of intellectual property.

'he use of modern trade mark as a distinctive sign to indicate the origin or source of the

product! carrying with it an association of high 6uality! goes "ack to the eighteenth century

+ngland! as in the case of cutlery trade. 'he real "oost to trade mark came with &nilever. It

marketed its soap under the "rand unlight! emphasising not the product as such "ut the

"rightness that its use will "ring to the clothes cleaned with it. 'he similarity of the products

in the same market has necessitated the marking of goods "y a sym"ol! which could

distinguish one7s products from similar goods made "y others.

In the language of the law! "rand names are known as trademarks. everal products! of the

same category or of different categories! can "e marketed under one "rand name. In this!

study we will "e dealing with the "asic concept of trademark in India so as to move ahead

and have the grasp of the structure and function of the 'rademark law in India including its

evolution! and a comparison with other nations.

Trademark 5 C$n(e+t and De%initi$n

A trademark is any sign that individualises the goods of a given enterprise and distinguishes

them from goods of its competitors.8 (arketing of a particular good or service "y the

4orld Intellectual Property 9rgani:ation.8 I#',9;&-'I9# '9 I#'+LL+-'&AL P,9P+,'?.


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producer is much "etter off as "y trademark "ecause recognition "ecomes easier and 6uality

is assured. 'he owner of the mark can prevent the use of similar or identical signs "y

competitors if such marks can lead to confusion.10y this way similar low 6uality su"stitutes

will "e prevented from replacing good 6uality ones.

'he 'rade (arks Act! )***! s. 8 @:" defines trade mark as a mark capa"le of "eing

represented graphically and which is capa"le of distinguishing the goods or services of one

person from those of others and may include shape of goods! their packaging and colours.

Also! s. 8@m defines mark as including a device! "rand! heading! la"el! ticket! name!

signature! word! letter! numeral! shape of goods! packaging or com"ination of colours or any

com"ination thereof$ 3or instance 3ord 5 named after %enry 3ord! is a name! then I0( B an

a""reviation! Apple for computers 5 is a word! etc. 'hey may also "e figurative elements like

that of the hell oil company.

A trademark is a word or sym"ol or com"ination thereof used "y manufacturer or vendor in

connection with a product or service.?'he distinctiveness is maintained as well as sales are

much smoother as people are a"le to identify with that particular commodity or service.

'he 'rade (ark Act! )*** defines well /nown 'rade mark as a mark in relation to any

goods and services which has "ecome so to the su"stantial segment which uses such goods or

receives such services that the use of such mark in relation to other goods or services would

"e likely to "e taken as indicating a connection in course of trade or rendering of services

"etween those goods or services and a person using the mark in relation to the first mentioned

goods or services.C

'rademark is one of the areas of intellectual property and its purpose is to protect the mark of

the product or that of a service. %ence a trademark is defined as a mark capa"le of "eing

represented graphically and which is capa"le of distinguishing the goods and services of one

person from those of others and may include shape of goods! their packaging and

com"ination of colours !they include a device !"rand! heading !la"el ticket !name !signature!

1 Article )D! 'rade ,elated Aspects on Intellectual Property ,ights@',IP.

? +arnst Eraft! Isreal am agrey! and Isreal aguy! 399; P,9;&-' ;+F+L9P(+#'!)**)! pringer! p.

1D=C P./. Fasudeva! 49,L; ',A;+ 9,EA#IGA'I9#H I(PLI-A'I9# 39, I#;IA# +-9#9(

)D*

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word !letter !numeral !shape of goods! packaging or com"ination of colours or any

com"ination thereof.D,egistration of trademark is not mandatory "ut in the present day

scenario there is increasing infringement and a lot of cases are challenged so it is advisa"le to

register 'rademarks. 'here is also a need for trademarks to "e glo"ally protected. 'his is said

"ecause most have regional or local name "rands and most constantly push these weak names

while struggling to get glo"al clearance.

A trademark can thus "e called a device that gives distinctiveness and a mode of

identification to a particular product or service. An increasing num"er of countries also allow

for the registration of less traditional forms of trademarks such as single colours! three

dimensional signs @shapes of product packaging! audi"le signs @sounds or olfactory signs

@smell.=

It is said that a trademark is a valua"le "usiness asset and a marketing tool which could help

in financing of the "usiness in a way. A "rand is always a trademark "ut a trademark is not

always a "rand.>'his is 6uoted "ecause there is often confusion "etween trademarks and

"rands! a "rand is simply a name! logo or sym"ol whereas a trademark is a distinctive sign or

indicator of some kind in a "usiness organisation! "ecause of these trademarks has a wider

connotation than "rands. A trademark may also function to sym"oli:e or guarantee the 6uality

of goods which "ear the trademark.*People are often induced to "uy a particular product due

to its distinctive trademark that denotes 6uality .'rademark sym"olises the value or goodwill

associated with the goods and which can "e assessed "y the extent to its perception in the

pu"lic mind with regards to its 6uality and specific source.)2

'rademarks are generally placed in any manner on the goods! their containers! and displays

or on tags or la"els attached to the goods or service. ))'he immense economic value a

successful trademark has is the primary reason for their protection under the law. 'rade mark

owners "y powerful advertising campaigns in colla"oration with licensees create a "rand

loyalty and esta"lish product differentiation.

6 httpHwww."usinessgyan.comcontentviewD81882 article written "y anthosh Fikram ingh as on )Cth

#ov!8221!accessed on ?th(arch! 82)2.7Making a Mark$ An Introduction to Trademarks or Small and Medium%si&ed Enter!rises b' (I)*+ 822, edn.!

p. 1.,,onald %ildret! iegrun /ane! ',A;+(A,/ LA4! ?th edn.! 8228! p.8.-

-arl 4 0attle! L+EAL 39,( 39, +F+,


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'his results in esta"lishing an envia"le goodwill and market power so as to nip competition

in the "ud and place a "arrier to the entry of new firms in that particular field of activity.

-inds

If a su"stantial segment of pu"lic associates a trade mark with a particular class of goods and

services! and if this trade mark is used for other goods or services! and the pu"lic is inclined

to associate the new goodsservices with the earlier goodsservices! then the mark is a well

known trade mark. If the proprietor of a trade mark is an association o !ersons! who do not

make a partnership within the meaning of the Indian Partnership Act! )*18! the trade mark is

called a ($,,e(ti'e mark. A special class of trade marks is termed as (erti%i(ati$n trade

mark#. 'hese trade marks do not indicate the origin of the goods! "ut are certified "y the

proprietor of the mark as conforming to certain characteristics! like 6uality! ingredients!

geographical origin etc. Agmark used for food items in India is a certification mark. A trade

mark is a sign used on! or in connection with the marketing of goods. aying that the sign is

used on the goods means that it may appear not only on the goods themselves "ut also on the

container or wrapper of the goods. aying that the sign is used in connection ith the

marketing of the goods refers mainly to the appearance of the sign in advertisements @in

newspaper! on television! etc. or in the windows of the shops in which the goods are sold.

4here a trade mark is used in connection with services! it may "e called #er'i(e mark! e.g.

service marks used "y hotels! restaurants! airlines! tourist agencies.

E'$,uti$n

3rom ancient times human "eings have "een under the process of creating and innovating

things! during pre5historic period man had made stone! jewellery! hunting materials! vessels

etc! when spirituality started to sprout up he made figurines of gods and goddesses.

9riginally! marks were placed on o"jects to identify ownership and to deter would "e

thieves.)80y this way the ancient people tried to control low 6uality goods! and as the maker

of the product was identified automatically the infringers were punished.

'he more a trademark came to "e known the more it inspired confidence in the goods and

services to potential clients.)14hen a mark was placed it meant that any other third party

)8

ruthi rinivasan! Evolution o Trademark a in India! httpHwww.altacit.compdfevolutionoftrademarklawsin india.pdf! as accessed on 1rd(arch! 82)2.iegrun ;. /ane! ',A;+(A,/ LA4! A P,A-'I'I9#+, E&I;+! )*>*! upplement! pp. *5)2.

4
http://www.altacit.com/pdf/evolutionoftrademarkhttp://www.altacit.com/pdf/evolutionoftrademark


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'he o"jective of this act was easy registration and "etter protection of trademarks and to

prevent fraud.

'he reappellation of the 'rademarks and (erchandise Act gave rise to the 'rademark Act

)***$ this was done "y the Eovernment of India so that the Indian 'rademark Law is in

compliance with the ',IP o"ligation on the recommendation of the 4orld 'rade

9rganisation. 'he o"ject of the )*** Act is to confer the protection to the user of the.

Trade Mark A(t0 )111

*b0ects and Reasons

'he 'rade and (erchandise (arks Act! )*C> has served its purpose over the last two

decades. It was felt that a comprehensive review of the existing law is re6uired in order to

provide a "etter coverage in the light of developments in trading and commercial practices!

increasing glo"alisation! need to encourage investment flows and transfer of technology! need

for simplification and harmonisation of law and to give importance to judicial decisions. )>

'o achieve all the a"ove discussed purposes the )*** Act came up with the following

o"jectives)*B

Providing for registration of trademark for services! in addition to goods.

Providing for omission of provisions for defensive registration of trademarks. Amplification of factors to "e considered for defining a well5known trademark.

;oing away with the system of maintaining registration of trademarks with different

legal rights! rather providing with simplified procedures for registration with e6ual

rights.

Providing an Appellate 0oard for speedy disposal of appeals and rectification

applications which lie on a usual course! "efore %igh -ourts.

3inal authority relating to certification trademark in the hands of ,egistrar instead of

-entral Eovernment. +xtension of application of convention to include inter5governmental organisations

and other countries.

9ther provisions relating to amendment in the previous Act! like change of

definitions! powers of courts! offences! renewal! etc.

'hus! with this o"jective and purpose the 'rade (arks Act! )*** has "een "rought into force

with effect from )Ctheptem"er! 8221.

,0. L. 4adhera! LA4 ,+LA'I9# '9 I#'+LL+-'&AL P,9P+,'

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Trademark C$m+ari#$n in India

'rademark recognition in Indian context is a complex phenomenon! where there is no single

common language! large percentage of population is illiterate and a small fraction of people

know +nglish. In such situations application of +nglish 'rademark law is illogical and a near

impossi"ility. 'hus! in order to make 'rademark law applica"le in India law has to adapt

according to Indian scenario.

4hile examining such cases in India! it has to "e kept in mind that the purchaser of goods

may not have a"solutely any knowledge of +nglish or the language in which the trademark is

made. 'o such a person slight difference in the letters of the words might sound phonetically

same. 'hus! in cases of passing of the principle to "e adopted is that that whether there has

"een a misrepresentation made "y the defendant of such nature as to cause an ordinary

consumer to confuse one product for another due to similarity of maker and other

surrounding factors.82

E##entia,#

In the light of afore5going discussion it is very clear that the kind of trademark to "e granted

in India is very tricky issue to deal with. 'here must "e some set standard whicha trademark

must meet in order to "e registered for its protection under the law. A few important essentials

of 'rademark areH

1istinctiveness

InIm!erial Tobacco v. Registrar+ Trade Marks2#the court discussed the meaning and scope of

the word Kdistinctiveness7 and held it to "e some 6uality in trademark which earmarked the

goods as distinct from other product or such goods.

It may "e class dependant and what is distinct for one class may not "e so for another. Also!

this distinctiveness means that the mark or the get up is distinct in itself from others and no

one can claim it. 'his is inherent distinctiveness while a distinctiveness ac6uired through use

may "e known as ac6uired distinctiveness.88

*ther essentials

0esides distinctiveness there are other 6ualities upon which a trademark is "ased. A

trademark should prefera"le an invented word. It should not "e deceptive in nature and thus!

must not use the identity of another product to use its goodwill. It should "e easy! spelt

2'

0. L. 4adhera! LA4 ,+LA'I9# '9 I#'+LL+-'&AL P,9P+,'

edn.! 822*! p.)11.2AI, )*== -al ?)1.220. L. 4adhera! LA4 ,+LA'I9# '9 I#'+LL+-'&AL P,9P+,'

7


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correctly! legi"le! short and appealing to eyes and ears. 0ut ultimately the most essential

re6uirement is that it must meet the re6uirements of registration.81

Remed4 5 Pr$te(ti$n under Indian Law

'he law under which a trademark is registered is provided for protection of the trademark.

'hus! whenever there is an infringement of a trademark this law must provide for some

remedy to the person whose right has "een infringed over a registered trademark. 'he Indian

Law! that is! the 'rade (arks Act! )*** provides for three type of remediesH

3ivil Remedies

4hen instances of infringement or passing off occur! the court of competent jurisdiction

@court not lower than ;istrict -ourt can "e moved for grant of interlocutory injunction!

damages and accounts of profits.8?

3riminal )roceedings

&nder -hapter II of the Act it is provided for the offences! penalties and other procedures

relating to infringement. A complaint may "e made against a person causing infringement.

0oth the actions! under the -ivil Law and criminal law proceedings can "e initiated

simultaneously.

Administrative Remedies

9pposing the registration of a deceptively similar trademark when the 'rademark registry is

in the process of considering the grant of a trademark can protect trademark.8C'he registry

can also "e moved for removal of a deceptively similar trademark when registered. 8D

C$n(,u#i$n

Intellectual Property reflects the idea that its su"ject matter is the product of the mind or the

intellect. As it7s the product of a creative and artistic mind it is "ound to changes. It can "e

sold! "ought! "e6ueathed and owned. As all this can "e done there are "ound to "e issues

related that have to "e dealt. 'rademarks and Patents are very important aspects of

Intellectual Property. 'rademark Protection has "ecome important in present day competitive

world "ecause! every producer of a good or service will want his mark to "e uni6ue! eye

catching as well as it should "e easily distinguisha"le from others. -reating a mark like this is

2-hapter II of the Act deals with conditions of registration while -hapter III deals with the procedure and

duration of registration.24

ection )1? and )1C! 'rade (arks Act! )***.2/ection 8)! 'rade (arks Act! )***.26ection 8C! 'rade (arks Act! )***.

,


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6uite difficult and after all this when infringing of the mark takes place it will case utmost

difficulty to the manufacturer.

4ith the ever expanding scope of Intellectual Property it is inevita"le that the scope of

'rademarks is going to increase. 3rom the very fact that the field of trademarks is going to

open up to new spheres like sound! shape and smell! the extent of development of law can "e

imagined. 'he law relating to domain names is already reaching heights and covering the

areas which no one had thought it would reach.

'hus in the light of the ever expanding scope of 'rade (ark Law in India I would like to

conclude with famous American historian and educator ;aniel J 0oorstein7s 6uoteH

4An image is sim!l' not a trademark+ a design+ a slogan or an easil' remembered !icture. It

is a studiousl' crated !ersonalit' !roile o an individual+ institution cor!oration+ !roduct or

service5.

!!I!LIOGRAPHI!LIOGRAPH

!$$k#

Ashwani /.,. 0ansal! LA4 93 ',A;+(A,/ I# I#;IA! 822).

0. L. 4adhera! LA4 ,+LA'I9# '9 I#'+LL+-'&AL P,9P+,'

-arl 4 0attle! L+EAL 39,( 39, +F+,

P./. Jalan! I#;&',IAL +-'A, ,+39,( I# EL90ALIA'I9# +,A! 822?.

,onald %ildret! iegrun /ane! ',A;+(A,/ LA4! ?th edn.! 8228.

-


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iegrun ;. /ane! ',A;+(A,/ LA4! A P,A-'I'I9#+, E&I;+! )*>*!

upplement! pp. *5)2.

Finod ople! (A#AEI#E I#'+LL+-'&AL P,9P+,'

Ta&,e $% Ca#e#

Im!erial Tobacco v. Registrar+ Trade Marks AI, )*== -al ?)1

Mi#(e,,ane$u# S$ur(e#

4orld Intellectual Property 9rgani:ation.

'rade ,elated Aspects on Intellectual Property ,ights@',IP.

Making a Mark$ An Introduction to Trademarks or Small and Medium%si&ed

Enter!rises b' (I)*+ 822, edn.! p. 1.

-'A; on trademark! p. 8.

Internet S$ur(e#

httpHwww."usinessgyan.comcontentviewD81882 article written "y

anthoshFikram ingh as on )Cth #ov!8221!accessed on ?th(arch! 82)2.

ruthi rinivasan! Evolution o Trademark a in India!

httpHwww.altacit.compdfevolutionoftrademarklawsin india.pdf! as accessed on 1rd

(arch! 82)2.

'
http://www.altacit.com/pdf/evolutionoftrademarklawsin%20_india.pdfhttp://www.altacit.com/pdf/evolutionoftrademarklawsin%20_india.pdf

semvi.project.ipr.57.shreyas shrivastava

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