TRADEMARK

PROLOG
• A trademark provides protection to the proprietor 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 proprietors of trademarks with recognition and financial profit.
Trademark 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 World Trade
Organisation, the law of trademarks is now updated under the Trademarks Act of 1999 along
with the Rules thereunder and is in harmony with two major international treaties on the
subject, namely, The Paris Convention for Protection of Industrial Property and TRIPS
Agreement. Trademarks 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 trademarks.
HISTORY
• The Indian Trademarks Act, 1940 was the first law on trademarks in India. Prior to that protection of trademarks was governed
by Common Law. Cases concerning trademarks were decided in the light of Section 54 of Specific Relief Act, 1877, while
registration was secured by obtaining a declaration as to proprietorship under the Indian Registration Act, 1908.
• The said enactment was modified by the Trademarks (Amendment) Act, 1941 and later by two other amendments. By the
Trademarks (Amendment) Act, 1943, the Trademarks Registry, which was formerly a part of the Patent Office, Calcutta (now
Kolkata) was separated from the Patent Office to constitute a separate Trademarks Registry under a Registrar of Trademarks at
Bombay (now Mumbai).
• The Trade & Merchandise Marks Act, 1958 was brought into force on 25th November 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
trademarks in India is more than a century old.
• With the advent of World trade organization, the law of trademarks is now updated under the Trademarks Act of 1999, which
provides for the registration of service marks and introduces various other provisions in conformity with the Trademark Law in
developed countries. The Trademarks Act, 1999, has been passed as indicated in the Preamble to the Act to amend and
consolidate the law relating to trademarks, to provide for registration and better protection of trademarks for goods and services
and for the prevention of the use of fraudulent marks.
• Under the Trademarks Act, 1999 the Government of India is empowered to make rules for implementing the Act and regulating
the trademarks Administration. Accordingly, the Government framed Trademarks Rules, 2001. Subsequent to various
amendments taken place in year 2002 and again in 2010, the trademark rules are now replaced with Trademark Rules, 2017.
PURPOSE
• The purpose of trademark law has been explained by the Apex Court in Dau Dayal v. State of U. P. , in the
following words: “The object of trademark law is to protect the rights of persons who manufacture and sell
goods with distinct trademarks against invasion by other persons passing off their goods fraudulently and
with counterfeit trademarks as those of the manufacturers. Normally, the remedy for such Violation 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
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 trademark law in India is a ‘first-to-file’ system that requires no evidence of prior use of the mark. A
trademark 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 Trademarks Act, 1999 has acquired a broad meaning and does not necessarily
mean the physical presence of the goods in India. Presence of the trademark on the Internet and publication
in international magazines and journals having circulation in India are also considered as use in India. One of
the breakthrough verdicts in this regard is the “Whirlpool case” in 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.”
FEATURE OF TM ACT, 1999
• The significant features of the Trademarks Act, 1999 includes:
(a) Providing for registration of trademark for services, in addition to goods.
(b) Extension of definition of trademark to include registration of shape of goods, packaging and combination of
colors.
(c) All 42 international classification of goods and services now applicable to India as well.
(d) Acknowledgment of the concept of "well-known trademarks".
(e) Increasing the period of registration and renewal of trademarks from 7 to 10 years, to bring it in conformity
with the accepted international practice.
(f) Broadening the possibility of Violation of trademarks. For instance, use of a registered trademark as trade name
or as a part of a trade name or use of a mark which is identical or deceptively similar to a registered trademark.
(g) Creation of an “Intellectual property Appellate Board” for hearing appeals against orders and decisions of the
Registrar of Trademarks for speedy disposal of cases and rectification applications which hitherto lie before High
Courts.
(h) Criminal remedies in case of falsification of trademarks.
(i) Recognition of use of trademark by even an unregistered licensee.
(j) Expeditious examination of a trademark application on payment of five times the application fee.
REGISTRATION OF TRADE MARKS
• The process whereby a trademark entered on the register of the trademarks referred to as
registration. Any person, claiming to be the proprietor of a trademark used or proposed to
be used by him, can apply for registration of a trademark to the Trademark Registry under
whose jurisdiction; the principal place of the business of the applicant falls, in the
prescribed manner for the registration of his trademark. In case of a company about to be
formed, anyone may apply in his name for subsequent assignment of the registration in the
company's favour.
• The registration process in India is based on the ‘first to file’ system. It is therefore
important that the rights holder apply for the registration of its mark as soon as possible.
The registration of a trademark in India typically takes about 2 to 3 years, subject to the
trademark not being opposed by a third party. The Office of the Controller General of
Patents, Designs and Trademarks is the appropriate office for filing of a trademark
application in India. This office has branches in Mumbai, Delhi, Chennai, Ahmedabad and
Kolkata.
REGISTRATION OF TRADE MARKS
• Before filling an application for registration, it is wise to make inspection of the already
registered trademarks to ensure that registration may not be denied in view of similarity of the
proposed mark to an existing one or prohibited one. It is advisable that a common law search
should also be conducted in order to ascertain if there are any third parties that might already be
using the trademark.
• Any person “claiming to be the proprietor” of the trademark ‘used’ or ‘proposed to be used’ by
him may make an application in the prescribed manner for registration of his trademark. “Any
person” is wide enough to include any individual, company, or association of persons or body of
individuals, society, HUF, partnership firm, whether registered or not, Government, trust etc.
• A company may make an application for registration of a trademark in its own corporate name.
In the case of a company incorporated outside India, the country of incorporation and the nature
of registration, if any, is to be mentioned.
• A partnership firm shall make the application in the names of all trading within the firm partner.
When including the name of a minor in the partnership, the name of guardian representing the
minors should be mentioned.
PROCESS FOR REGISTRATION
• An application for registration of trademarks is received at the Head office or a branch office of the Trademarks Registry
within whose territorial limits the Principal place of the business of the applicant is situated. The digitization and
formality checking of the application is done at the respective offices.
• The Application is then examined mainly as to whether the relevant mark is capable of distinguishing applicant’s good or
services, whether it is prohibited for registration under any law for the time being in force, whether the registration of the
relevant mark is likely to cause confusion or deception because of earlier identical or similar marks existing on records.
The Examination of all applications is done centrally in the Head Office of the TRADEMARKS Registry at Mumbai.
• The Registrar on consideration of the application and any evidence of use or distinctiveness decides whether the
application should be accepted for registration or not, and if accepted, publishes the same in the Trademarks Journal, an
official gazette of the Trademarks Registry, which is hosted weekly on official website.
• Within four months from the date of publication any person can file an opposition in such cases the opposition proceeding
is conducted at respective office of the Trademarks Registry.
• Under opposition proceeding, a copy of the notice of opposition is served to the applicant who is required to file a
counter-statement within two months failing which the application is treated as abandoned. The copy of the a counter-
statement is served to the opponent, who leads evidence in support of his case by way of affidavit, then the applicant
leads evidence. After that the opponent files evidence by way of rebuttal. On completion of evidence, the matter is set
down for a hearing and the case is decided by a Hearing officer.
• The registrar’s decision is appealable to the Intellectual Property Appellate Board.
FLOW CHART OF REGISTRATION
RIGHTS OF TRADEMARK PROPRIETOR
• The registration of a trademark confers on the registered proprietor of the trademark the exclusive
right to use the trademark in relation to the goods or services in respect of which the trademark is
registered. While registration of a trademark is not compulsory, it offers better legal protection for an
action for Violation. The registration of a trademark confers the following rights on the registered
proprietor:
“(i) It confers on the registered proprietor the exclusive right to the use of the trademark in relation to the
goods or services in respect of which the trademark is registered.
(ii) If the trademark consists of several matters, there is an exclusive right to the use of the trademark taken as
a whole. If the trademark contains matter common to trade or is not of a distinctive character, there shall be no
exclusive right in such parts.
(iii) It entitles the registered proprietor to obtain relief in respect of Violation of the trademark in the manner
provided by the Trademarks Act, 1999 when a similar mark is used on (a) same goods or services, (b) similar
goods or services, (c) in respect of dissimilar goods or services.
(iv) Registration of a trademark forbids every other person (except the registered or unregistered permitted
user) to use or to obtain the registration of the same trademark or a confusingly similar mark in relation to the
same goods or services or the same description of goods or services in relation to which the trademark is
registered.
RIGHTS OF TRADEMARK PROPRIETOR
(v) After registration of the trademark for goods or services, there shall not be registered the same or confusingly
similar trademark not only for the same goods or services but also in respect of similar goods or services by virtue
of Section 11(1) of Trademarks Act, 1999.
(vi) Moreover, after registration of the trademark for goods or services, there shall not be registered the same or
confusingly similar trademark even in respect of dissimilar goods or services by virtue of Section 11(2) in case of
well-known trademarks.
(vii) Registered trademark shall not be used by any one else in business papers and in advertising. Use in
comparative advertising should not take undue advantage of the trademark. Such advertising should not be
contrary to honest practices in industrial or commercial matters. The advertising should not be detrimental to the
distinctive character or reputation of the trademark.
(viii) There is a right to restrict the import of goods or services marked with a trademark similar to one’s trademark.
(ix) There is a right to restrain use of the trademark as trade name or part of trade name or name of business
concern dealing in the same goods or services.”
The registered trademark continues to enjoy all the rights, which vest in an unregistered trademark. By
registration, the proprietor of an unregistered trademark is converted into proprietor of the registered
trademark. An application for registration may be based on a trademark in use prior to such application and
such a trademark is already vested with rights at Common law from the time the use of the mark was
commenced.
VIOLATION OF REGISTERED TRADEMARKS
• Violation, very broadly means taking unfair advantage or being detrimental to the distinctive character or
reputation of a trademark.
• Violation of trademarks explicitly enumerates the grounds, which constitute violation of a registered
trademark. This section lays down that when a person who is not entitled to use such a trademark under the
law uses a registered trademark, it constitutes Violation. A registered trademark is infringed, if the mark is
identical and is used in respect of similar goods or services; or the mark is deceptively similar to the
registered trademark and there is an identity or similarity of the goods or services covered by the
trademark; or the trademark is identical and is used in relation to identical goods or services; and that such
use is likely to cause confusion on the part of the public or is likely to be taken to have an association with
the registered trademark.
• A person shall be deemed to have used a registered trademark in circumstances, which include affixing the
mark to goods or packaging, offering or exposing the goods for sale or supply of services, importing or
exporting the goods, using the trademark as trade name or trademark on business paper or in advertising. A
person shall also be deemed to have infringed a registered trademark if he applies such registered
trademark to a material intended to be used for labelling or packaging goods as a business paper, or for
advertising goods or services knowing that the application of such mark is not authorised by the proprietor
or licensee.
INFRINGEMENT OF REGISTERED TRADEMARKS
• A Violation action is available to the registered proprietor or registered user to enforce his exclusive
right over the trademark in relation to the goods in respect of which it is registered. If at the time of
registration of trademark, certain limitations or conditions have been imposed, then, the exclusive
right has to be evaluated within the terms of such registration.
• In M/s J K Oil Mills v. M/s Adani Wilmar Ltd. , the Delhi High Court held that “in order to constitute
Violation under the provisions of Section 29 of the Trademarks Act, it would be necessary to show
that impugned trademark (label) is identical or deceptively similar to the registered trademark, and
once the plaintiff is able to establish that the impugned trademark (label) is identical or deceptively
similar to the registered trademark (label) then, it matters little whether the defendant is using the
impugned mark/label in respect of the goods and services which are not similar to those in respect of
which the trademark is registered.”
• The Calcutta High Court in Hearst Corpn. v. Dalal Street Communication Ltd. , said that “in an
action for Violation – (a) the plaintiff must be the registered proprietor of a trademark; (b) the
defendant must use a mark deceptively similar to the plaintiff’s mark; (c) the use must be in relation
to the goods in respect of which the plaintiff’s mark is registered; (d) the use by the defendant must
not be accidental but in the course of trade.”
VIOLATION OF REGISTERED TRADEMARKS
• In T.V. Venugopal v. Ushodaya Enterprises Ltd. , the Apex Court noted that “the respondent’s
mark “Eenadu” had acquired extraordinary reputation and goodwill in the State of Andhra
Pradesh. It was held that the Appellant was clearly attempting to utilise the reputation and
goodwill of the Respondents. The Court reasoned that allowing the Appellant to use the mark
would create confusion in the mind of the consumers, leading the consumers to think that the
incense sticks were manufactured by the Respondent’s company. The Court said that permitting
the Appellant to use the trademark would lead to the erosion of the extra-ordinary reputation
and goodwill acquired by the Respondent. The law is consistent that no one can be permitted to
encroach upon the reputation and goodwill of other parties. This approach is in consonance
with protecting proprietary rights of the Respondent company.”
ASSIGNMENT AND TRANSMISSION
• The registered proprietor of a trademark is entitled to assign the trademark and to give effectual
receipts for any consideration for such assignment. Under the new Act, a registered trademark
is assignable and transmissible whether with or without goodwill of the business either in
respect of all goods or services or part thereof. The assignment or transmission of trademark
has been prohibited, where multiple exclusive rights would be created in more than one person
in relation to same goods or services; same description of goods or services; or goods or
services or description of goods or services associated with each other, the use of such
trademarks would be likely to deceive or cause confusion.
• Assignment of a trademark without goodwill of business is not allowed unless the assignor
obtains directions of the Registrar and advertises the assignment as per the Registrar’s
directions. The assignment and transmission of certification trademarks is allowed only with
the consent of the Registrar. Associated trademarks are assignable and transmissible only as a
whole but they will be treated as separate trademarks for all other purposes. The assignment
and transmission of trademarks is are absolute.
ASSIGNMENT AND TRANSMISSION
• An unregistered trademark may be assigned or transmitted with or without the goodwill of the business
concern. Earlier such an assignment or transmission without goodwill used to be on a different footing.
• Section 39 of Trademarks Act, 1999 has simplified the provisions in relation to assignment of
unregistered trademark without goodwill. It lays down that an unregistered trademark may also be
assigned with or without goodwill. Three conditions in Section 38(2) of Trade and Merchandise Marks
Act, 1958 which were applicable on assignment of a trademark without goodwill have been abrogated.
Now, both unregistered and registered trademark are subject to same conditions stated in Section 42,
wherein such an assignee is required to apply to the Registrar within six months extendable by three
months for directions with respect to advertisement. The assignee must issue the advertisement as
directed for assignment to take effect, as the two limbs are cumulative.
• Thus, the unregistered trademark had been coupled with a registered trademark with regard to goods,
business, time and person. The situation has changed under Section 39 of Trademarks Act, 1999 and
now, even an unregistered trademark can be assigned or transmitted without the goodwill of the
business concern, and, without subjecting it to the above condition of coupling it with a registered
trademark.
REGISTERED TRADEMARK HOLDERS
• Section 50 empowers the Registrar to vary or cancel registration as registered user on the ground that the
registered user has used the trademark otherwise than in accordance with the agreement or in such a way
as to cause or likely to cause confusion, or deception or the proprietor/registered user misrepresented or
has failed to disclose any material facts for such registration or that the stipulation in the agreement
regarding the quality of goods is not enforced or that the circumstances have changed since the date of
registration, etc. However, Registrar has been put under obligation to give reasonable opportunity of
hearing before cancellation of registration.
• Section 51 empowers the Registrar to require the proprietor to confirm, at any time during the
continuation of registration as registered user, whether the agreement on the basis of which registered
user was registered is still in force, and if such confirmation is not received within a period of three
months, the Registrar shall remove the entry thereof from the Register in the prescribed manner. The Act
also recognizes the right of registered user to take proceedings against Violation.
• Section 54 provides that the registered user will not have a right of assignment or transmission. However,
it is clarified that where an individual registered user enters into partnership or remains in a reconstituted
firm, the use of the mark by the firm would not amount to assignment or transmission.”
COLLECTIVE MARKS
• The primary purpose of a collective mark is to indicate a trade connection with the
Association or Organization. To be registerable, the collective mark must be
capable of being represented graphically and meet other requirements as are
applicable to registration of trademarks in general. These provisions provide for
registration of a collective mark which belongs to a group or association of
persons and the use thereof is reserved for members of the group or association of
persons.
• Collective marks serve to differentiate distinctive features of the products or
services offered by those enterprises. It may be owned by an association which
may not use the collective mark but whose members may use the same. The
association ensures compliance of certain quality standards by its members, who
may use the collective mark if they comply with the prescribed requirements
concerning its use.
CERTIFICATION TRADEMARK
• The purpose of certification trademark is to show that the goods on which the
mark is used certified by some competent person in respect of certain
characteristics of the goods such as origin, mode of manufacture, quality, etc.
The proprietor of a certification trademark does not himself deal in the goods.
A certification trademark used in addition to the user’s own trademark on his
goods. Unlike the old Act, which empowered the Central Government to
register certification trademark, the new Act delegates the final authority for
registration of certification trademark to the Registrar.
• Trademarks in general serve to differentiate the goods or services of one person
from those of others. The function of a certification trademark is to indicate
that the goods or services comply with certain objective standards in respect of
origin, material, mode of manufacture of goods or performance of services as
certified by a competent person.
RELIEF AND PENALTY FOR INFRINGEMENT AND
PASSING OFF
• Civil Litigation : A suit can be initiated either under the law of passing off or for Violation under the
Trademarks Act, 1999 depending on whether the trademark is unregistered, pending registration or
registered respectively.
• The suit for passing off and/or violation can be initiated either in the District Court or in the High Court
depending on the valuation of the suit. The suit can be at the place where the rights holder or one of the
rights holders actually and voluntarily reside or work for gain or carries on business. In the complaint, the
rights holder is required to demonstrate that (a) the alleged infringing act involves a mark that is identical
or similar to a trademark of the rights holder; (b) the infringing representation of a trademark is being
used in connection with goods or services and might lead to confusion in public regarding the origin of
the infringing goods/services; (c) the unlawful act interfered with the trademark holder's rights of
exclusive use or caused the rights holder economic loss.
• Section 135 expressly stipulates that the relief which a Court may grant in any suit for Violation or for
passing off referred to in Section 134 includes injunction (subject to such terms, if any, as the court thinks
fit) and at the option of the plaintiff, either damages or an account of profits, together with or without any
order for the delivery up of the infringing labels and marks for destruction or erasure.
RELIEF AND PENALTY FOR INFRINGEMENT AND
PASSING OFF
• The penalty for applying false trademark, trade description, etc. and imposes punishment with imprisonment for a
term which shall not be less than six months but which may extend to three years and with fine which shall not be
less than fifty thousand rupees but which may extend to two lakh rupees. On second and subsequent conviction for
offences committed then punishment with imprisonment which shall not be less than one year but which may extend
to three years and with fine which shall not be less than one lakh rupees but which may extend to two lakh rupees.
• The use of any words which would lead to the belief that a person’s place of business is officially connected with the
Trademark Office shall be treated as offence and be punishable with imprisonment for a term which may extend to
two years or with fine or with both.
• The penalty for falsification of entries in the register is punishable with imprisonment not exceeding two years or
with fine or with both.
• Where a person committing offence is a company, every person in charge of and responsible to the company for the
conduct of its business at the time of commission of an offence will be liable. Where a person accused proves that
the offence was committed without his knowledge or he has exercised all due diligence to prevent the commission of
such offence, he will not be liable. However, where it is proved that an offence has been committed with the consent
or connivance or is attributable to any neglect of any Director, Manager, Secretary or any other officer of the
company; he shall be deemed to be guilty of the offence
 CASE LAWS
• The Apex Court in Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical
Laboratories explained the distinction between a suit based on Violation and that based on
passing off. It was explained that: “while an action for passing off is a common law remedy
being in substance an action for deceit, that is, a passing off by a person of his own goods
as those of another, that is not the gist of an action for Violation. The action for Violation is
a statutory remedy conferred on the registered proprietor of a registered trademark for the
vindication of the 'exclusive right to the use of the trademark in relation to those goods'.
The use by the defendant of the trademark of the plaintiff is not essential in an action for
passing off, but is the sine qua non in the case of an action for Violation.”
• In Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia and Ors., it was held that “the law on
the subject is well settled. In cases of Violation either of trademark or of copyright,
normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat
grant of injunction in such cases. The grant of injunction also becomes necessary if it
prima facie appears that the adoption of the mark was itself dishonest.”
CASE LAWS
• In Proctor & Gamble Co. & Anr v. Shipra Laboratories (November, 2011), the Delhi High Court held that “it is not in
dispute that the defendant has been using the trademark SAFE GUARD for sale of antiseptic creams. There is practically no
difference between the trademark SAFEGUARD and SAFE GUARD since no person is likely to notice the space between
the words SAFE and GUARD… The Court observed that in any case, the defendant has no legal right to use the trademark
SAFEGUARD or any other mark identical or deceptively similar to this registered trademark of the plaintiff in respect of
any of the products for which registration has been granted. The plaintiffs, therefore, are entitled to an appropriate
injunction, restraining the defendant from using the trademark SAFE GUARD in respect of the product for which
registration has been granted to it by Registrar of Trademarks in India.”
• In Laxmikant V. Patel v. Chetanbhai Shah and Anr., it was stated: “A person may sell his goods or deliver his services such
as in case of a profession under a trading name or style. With the lapse of time such business or services associated with a
person acquire a reputation or goodwill which becomes a property which is protected by Courts. A competitor initiating
sale of goods or services in the same name or by imitating that name results in injury to the business of one who has the
property in that name. The law does not permit any one to carry on his business in such a way as would persuade the
customers or clients in believing that the goods or services belonging to someone else are his or are associated therewith. It
does not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair
play are, and ought to be, the basic policies in the world of business. Secondly, when a person adopts or intends to adopt a
name in connection with his business or services which already belongs to someone else, it results in confusion and has
propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury.”