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Unit-Ii: Trademarks (The Trademarks Act, 1999)
Unit-Ii: Trademarks (The Trademarks Act, 1999)
Trademarks
(The Trademarks Act, 1999)
a) Introduction to Trademark Law
b) Brief Introduction to related International Treaties and
Conventions
c) Definitions (s2), Registration of Trademarks, Procedure,
Grounds of Refusal and Well Known Trademarks (ss9-
12, ss18-23 and s33)
d) Passing Off, Infringement and Exceptions to
Infringement Actions, Remedies (ss27-30, s34, ss134-
135)
e) Assignment and Licensing (ss48-53)
f) Intellectual Property Appellate Board (ss83-100)
g) Conflicts of Trademarks with Domain Name
h) Unconventional Trademarks
Origin of Trade Mark
• The law of trademark in India before 1940 was based on the
common law principles of passing off and equity as followed
in England before the enactment of the first Registration
Act, 1875.
• The first statutory law related to trademark in India was the
Trade Marks Act, 1940 which had similar provision like the
UK Trade Marks Act, 1938.
• In 1958, the Trade and Merchandise Marks Act, 1958 was
enacted which consolidated the provisions related to
trademarks contained in other statutes like, the Indian Penal
Code, Criminal Procedure Code and the Sea Customs Act.
• The Trade and Merchandise Marks Act, 1958 was repealed
by the Trade Marks Act, 1999 and is the current governing
law related to registered trademarks. The 1999 Act was
enacted to comply with the provisions of the
TRIPS(Agreement on Trade Related Aspects of Intellectual
Property Rights).
• Though some aspects of the unregistered trade marks
have been enacted into the 1999 Act, but they are
primarily governed by the common law rules based on the
principles evolved out of the judgments of the Courts.
• Where the law is ambiguous, the principles evolved and
interpretation made by the Courts in England have been
applied in India taking into consideration the context of our
legal procedure, laws and realities of India.
Meaning
• A trademark or trade mark is a distinctive sign
or indicator of some kind which is used by an
individual, business organization or other legal
entity to uniquely identify the source of its
products and/or services to consumers, and to
distinguish its products or services from those
of other entities.
Features
• It should be distinctive
• TM should preferably be an invented word. Eg: ZEN
• It should be easy to pronounce and remember if it is
word mark.
• In case of a device mark -should be capable of being
described by a single word.
• It was be easy to spell correctly and write legibly.
• It should not be descriptive.
• It should be short.
• It should not belong to the class of marks prohibited for
registration.
• It should satisfy the requirements of registration.
Objectives
• 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 & harmonization of
trade mark management systems and
• To give effect to important judicial decisions
Objectives u/ Act
• To provide for registration of trade mark for services, in addition to goods;
• Registration of trade marks, which are imitation of well known trade marks,
not to be permitted, besides enlarging the grounds for refusal of
registration;
• Amplification of factors to be considered for defining a well known mark;
• To provide only a single register with simplified procedure for registration
and with equal rights;
• Providing for registration of “collective marks” owned by associations;
• Providing an Appellate Board for speedy disposal of appeals ad rectification
applications;
• Providing enhanced punishment for the offences relating to trade marks;
• Prohibiting someone else’s trademark as part of corporate names, or name
of business concern;
• Provision for filing a single application for registration in more than one
class;
• Increasing the period of registration and renewal
Signs which may serve as TM
• Words:
This category includes company names, surnames, forenames,
geographical names and any other words or sets of words, whether
invented or not, and slogans.
• Letters and Numerals:
Examples are one or more letters, one or more numerals or any
combination thereof.
• Device mark:
It includes any label, sticker, monogram, logo or any geometrical figure
other than word mark.
• Colored Marks:
This category includes words, devices and any combinations thereof in
color.
• 3D Signs:
A typical category of 3D signs is the shape of the goods or their
packaging.
Definitions
• Sec. 2(1) (e)"certification trade mark" means a mark
capable of distinguishing the goods or services in
connection with which it is used in the course of trade
which 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 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 .
Examples: Agmark for all agricultural products, ISI mark ,
For industrial product, BIS hallmark certifies the purity of
gold jewellery, SILK Mark, Wool Mark etc.
• Sec. 2(1)(g) "collective mark" means a trade
mark distinguishing the goods or services of
members of an association of persons (not being
a partnership within the meaning of the Indian
Partnership Act, 1932) (9 of 1932) which is the
proprietor of the mark from those of others .
• Examples: CS, CA, TATA Sons
• Sec. 2(1)(h) “deceptively similar” A mark shall
be deemed to be deceptively similar to another
mark if it so nearly resembles that other mark as
to be likely to deceive or cause confusion.
• Sec. 2(1)(i) “false trade description” means—
(I) a trade description which is untrue or misleading in a
material respect as regards the goods or services to which
it is applied; or
(II) any alteration of a trade description as regards the goods
or services to which it is applied, whether by way of
addition, effacement or otherwise, where that alteration
makes the description untrue or misleading in a material
respect;
(III) any trade description which denotes or implies that
there are contained, as regards the goods to which it is
applied, more yards or metres than there are contained
therein standard yards or standard metres; or
Sec. 2(1)(i)…..
(IV) any marks or arrangement or combination
thereof when applied—
• (a) to goods in such a manner as to be likely to
lead persons to believe that the goods are the
manufacture or merchandise of some person
other than the person whose merchandise or
manufacture they really are;
• (b) in relation to services in such a manner as to
be likely to lead persons to believe that the
services are provided or rendered by some
person other than the person whose services
they really are; or
Sec. 2(1)(i)…..