Trademark Rights

INTELLECTUAL PROPERTY
RIGHTS-I Project

Bachelor of Law (B.A Ll.B)

Under the Supervision of Submitted by Prof. Sajid

Zaheer Amani Shivam Dalmia
Faculty of Law Semester VIII
(Fourth year) sec-B
FACULTY of LAW
JAMIA MILLIA ISLAMIA, NEW DELHI-25
 ACKNOWLEDGEMENT

I convey my hearty affection to all those people who

helped and supported me, for completion of my project.

My deepest thanks to our subject Professor (Prof. Sajid

Zaheer Amani) for guiding and correcting various topics
of mine with attention and care. she has taken pain to
go through the project and make necessary correction
as and when needed

Shivam Dalmia
WHAT IS A TRADEMARK 

A ‘Mark` may consist of a word or invented word, signature, device, letter, numeral, brand,
heading, label, name written in a particular style, the shape of goods other than those for which a
mark is proposed to be used, or any combination thereof or a combination of colors and so forth.
Subject to certain conditions, a trademark may also be symbolized by the name of a person,
living or dead.
 
 
Trademark in India: Registering Procedures & Laws and Challenging Trademarks

LEGISLATION (INDIA TRADEMARK LAW)

The Indian law of trademarks is enshrined the new Trade Marks Act, 1999 came into force with
effect from September 15, 2003. The old Trade and Merchandise Marks Act, 1958 was repealed
at the same time. The new Trademarks Act of 1999 is in line with the WTO recommendations
and is in conformity with the TRIPS Agreement to which India is a signatory.

MAIN FEATURES OF NEW LEGISLATION IN INDIA

 Under the new Trademarks Act of 1999:

 Registration of Service Marks allowed in addition to Trademarks for goods.
  No separate application necessary for each category/class of goods or services; a single
application would do, however filing fee will be charged separately for each class of
goods/services.
 The term of registration of trademark is ten years, subject to renewal there after
 The system of maintaining registration of trademark in Part A and Part B with different
legal rights, dispensed away.
 Registration of trademarks which are imitations of well known trademarks not permitted.
 Registration of Collective Marks owned by associations allowed.
 Offences relating to trademark made cognizable.
 Filing Fees enhanced by more than 8 times.
 Extension of application of convention countries. 

TRADEMARKS IN INDIA

A ‘Mark` may consist of a word or invented word, signature, device, letter, numeral, brand,
heading, label, name written in a particular style, the shape of goods other than those for which a
mark is proposed to be used, or any combination thereof or a combination of colors and so
forth. Subject to certain conditions, a trademark may also be symbolized by the name of a
person, living or dead. For the purpose of registration, a mark chosen should be capable of
distinguishing goods or services of one person from those of the others. Further it should not be
deceptively similar to an existing mark of another person and not the one expressly prohibited
under the Act. The marks devoid of any distinctive character, or which are only indicative of the
kind, quality, quantity, purpose, value or geographical origin of the goods, or which are marks
already in vogue in the trade due to their customary use may not be registered. But these
disqualifications do not apply to marks, which have already acquired distinction due to their
popularity and consistent use. Internationally acclaimed brand names are freely available for use
in India. 

WHAT IS COVERED UNDER TRADEMARKS

A trademark is a mark used in relation to goods or services so as to indicate a connection in the
course of trade between the goods or services and some person having the right as proprietor to
use the mark.

WHAT IS THE FUNCTION OF A TRADEMARK 

 Under modern business condition a trade mark performs four functions:
 It identifies the goods / or services and its origin.
 It guarantees its unchanged quality
 It advertises the goods/services
 It creates an image for the goods/ services.

 HOW TO SELECT A TRADEMARK 

 If it is a word it should be easy to speak, spell and remember.

 The best trade marks are invented words or coined words.
 Please avoid selection of a geographical name. No one can have monopoly right on it.
 Avoid adopting laudatory word or words that describe the quality of goods(such as best,
perfect, super etc)
 It is advisable to conduct a market survey and a search at Trademark office toascertain if
same/similar mark is used in market.
 
WHAT ARE THE TYPES OF TRADEMARKS THAT CAN BE REGISTERED
Under the Indian trademark law the following are the types of trademarks that can be registered:

 
 Product trademarks: are those that are affixed to identify goods.
 Service trademarks: are used to identify the services of an entity, such as the trademark
for a broadcasting service, retails outlet, etc. They are used in advertising for services.
 Certification trademarks: are those that are capable of distinguishing the good sor
services in connection with which it is used in the course of trade and which are certified
by the proprietor with regard to their origin, material, the method of manufacture, the
quality or other specific features
 Collective trademarks: are registered in the name of groups, associations or other
organizations for the use of members of the group in their commercialactivities to
indicate their membership of the group. 

WHO CAN APPLY FOR A TRADEMARK 

A person who claims to be the proprietor of the trademark can apply for the registration of its
mark for goods as well services. A person may apply for registration of a trade mark to the
Trademark office under whose jurisdiction the principal place of the business of the applicant in
India falls. In case, the principal place of business is outside India, then the application can be
filed in the Trademark office under whose jurisdiction the office of the lawyer 

 
appointed by you is located. 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 favor. Before making an
application for registration it is prudent to conduct a trademark search in the Trademark office in
context of the already registered trademarks to ensure that registration may not be denied in view
of resemblance of the proposed mark to an existing one or prohibited one.

WHO CAN USE A TRADEMARK 

The right to use a mark can be exercised either by the registered proprietor or a registered user.

WHAT ARE LEGAL REQUIREMENTS FOR REGISTRATION OFTRADEMARK IN INDIA

 The legal requirements to register a trade mark under the Legislation are:
 The selected mark should be capable of being represented graphically (that is in the paper
form).
 It should be capable of distinguishing the goods or services of one under taking from
those of others.
 It should be used or proposed to be used mark in relation to goods or services for the
purpose of indicating or so as to indicate a connection in the course of trade between the
goods or services and some person have the right to use the mark with or without identity
of that person. 

WHAT IS THE DURATION OF A TRADEMARK IN INDIA?

Term of registration of a trademark is ten years, which may be renewed for a further  period of
ten years on payment of prescribed renewal fees. Non-user of a registered trademark for a
continuous period of five years is a ground for cancellation of registration of such trademark at
the behest of any aggrieved party. 

CONVENTION APPLICATION AND INTERNATIONAL TREATIES

India has declared certain countries as convention countries, which afford to citizens of India
similar privileges as granted to its own citizens. A person or company from a convention
country, may within six months of making an application in the home country, apply for
registration of the trademark in India. If such a trademark is accepted for registration, such
foreign national will be deemed to have registered his or her trademark in India, from the same
date on which he or she made application in the home country. Where the applications have been
made for the registration of trademark in two or more convention countries, the period of six
months would be reckoned from the date on which the earlier or earliest of those applications
was made. Although the recovery of damages for infringement of a trademark is possible only
if the infringement takes place after the date of filing application for registration with the
concerned trademark office in India, yet the deemed seniority in making application in home
country may entitle the applicant to initiate an action in India for injunction, delivery of
impugned labels and so on. 

WHAT ARE BENEFITS OF TRADEMARK REGISTRATION

The registration of a trade mark confers upon the owner the exclusive right to the useof the
registered trade mark and indicate so by using the symbol (R) in relation to the goods or services
in respect of which the mark is registered and seek the relief of infringement in appropriate
courts in the country. The exclusive right is however subject to any conditions entered on the
register such as limitation of area of use etc. Also, where two or more persons have registered
identical or nearly similar mark due to special circumstances such exclusive right does not
operate against each other. 

REMEDIES FOR INFRINGEMENT OF TRADEMARK IN INDIA ANDPASSING-OFF

Two types of remedies are available to the owner of a trademark for unauthorized use of his or
her mark or its imitation by a third party. These remedies are:
•an action for infringement' in case of a registered trademark; and
•an action for passing off' in the case of an unregistered trademark While former is a statutory
remedy, the latter is a common law remedy. In an action involving infringement or passing off, a
court may grant relief of injunction and/or monetary compensation for damages for loss of
business and/or confiscation/destruction of infringing labels and tags etc. Although registration
of trademark is prima facie an evidence of validity of a trademark, yet the registration can not
upstage a prior consistent user of trademark, for the rule is ‘priority in adoption prevails over
priority in registration`. 

HOW TO APPLY FOR REGISTRATION OF A TRADEMARK IN RESPECTOF

PARTICULAR GOODS OR SERVICES
Goods and services are classified according to the International Classification of goods and
services. Currently schedule IV of the Legislation provides a summary of list of such goods and
services falling in different classes which is merely indicative. The Registrar is the final authority
in the determination of the class in which particular goods or services fall. The Schedule IV of
the Legislation is annexed at theend of this questionnaire on trade marks.

WHAT PURPOSE THE TRADEMARK SYSTEM SERVES

•It identifies the actual physical origin of goods and services. The brand itself is the seal of
authenticity.
•it guarantees the identity of the origin of goods and services.
•It stimulates further purchase.
•It serves as a badge of loyalty and affiliation.
•It may enable consumer to make a life style or fashion statement. 

WHO BENEFITS FROM TRADEMARK REGISTRATION

The Registered Proprietor: The Registered Proprietor of a trade mark can stop other traders from
unlawfully using his trade mark, sue for damages and secure destruction of infringing goods and
or labels. The Purchaser and ultimately Consumers of trademarks goods and services. The
Government: The Trademarks Registry is expected to earn a substantial annual revenue, which is
perpetually on the rise. 

WHAT DOES THE REGISTER OF TRADEMARK CONTAIN

The register of trade mark currently maintained in electronic form contains inter alia the trade
mark the class and goods/ services in respect of which it is registered including particulars
affecting the scope of registration of rights conferred or disclaimers, if any; the address of the
proprietors; particulars of trade or other description of the proprietor; the convention application
date (if applicable); where a trade mark has been registered with the consent of proprietor of an
earlier mark or earlier rights, that fact. 

WHAT ARE THE SOURCES OF TRADEMARK LEGISLATION

•(1) The national statute i.e., the Trade Marks Act,1999 and rules made thereunder .
•(2) International multilateral convention.
•(3) National bilateral treaty.
•(4) Regional treaty.
•(5) Decision of the courts.
•(6) Office practice and rulings
•(7) Decision of Intellectual Property Appellate Board.
•(8) Text books written by academician and professional experts.

 
 
 
THE INDIAN TRADEMARK ACT 1999

The enactment of the Indian Trademark Act 1999 was a big step forward from the trade and
merchandise Mark Act 1958 and the Trademark Act 1940.The newly enacted Act has some
features not present in the 1958 Act and these are:1. Registration of service marks, collective
marks and certification trademarks2. Increasing the period of registration and renewal from 7
years to 10 years.3. Allowing filling of single application for registration in more than one
class4. Enhanced punishment for offences related to trademarks.5. Exhaustive definitions for
terms frequently used.6. Simplified procedure for registration users and enlarged scope of
permitted use.

Case study Concept of House mark- The 'Parle' Case Study

 www.indlawnews.comA house mark can be used for all products manufactured by a company or
group of companies,if each product has a distinct product identification mark. This has been
explained in detail bythe Bombay High Court in its recent judgment of Parle Products Private
Limited vs. Parle AgroPrivate Limited, (hereinafter referred as the Parle case).To comprehend
the case better, firstly it is important to understand the concept of house mark and its distinction
from product identification marks. House mark refers to a trademark whichis used to identify the
operations of an organisation[1].This may also be the company name.This trademark is used to
identify one or more products of the same company and at times isused in combination with
other trademarks to establish distinctiveness of the product. Thushouse mark is a trademark that
appears on and identifies all of a company’s products. A housemark which is a famous trademark
is extremely advantageous as it offers a brand value to other  products of the company that either
prefix or suffix the house mark along with their trademark.An example can be given of Cadbury
which is a famous mark, based on its Cadbury DairyMilk and is using the house mark Cadbury
for other products manufactured by it such asCadbury Eclairs, Cadbury Bournvita, etc.A product
identification mark is a mark that distinguishes the product of one company from theother, even
if both the companies have a common house mark. Product identification mark creates brand for
a product and is also referred as the brand name. A brand generates

 
identification for a product and shuns confusion, if any, in the minds of the public
regardingorigin of the product, i.e. products having common house mark. House marks and
productmarks often appear together on a product label.The distinction[2]between house mark
and product mark may be noted as following-(1) A house mark identifies the company or
division that is the maker or seller of the product,or offerer of a service. It can also be used to
identify a particular grouping of products as a product line whereas a product mark identifies the
particular product or service that is beingsold.(2) A company can have more than one house
mark to identify different product lines but a particular product can have only one mark which is
the product identification mark.An example of a house mark and product mark is Dabur. Dabur,
is the house mark of Dabur India Limited and various products offered by Dabur such as Dabur
Babool, Dabur Real,Dabur Vatika etc. are product marks prefixed by the house mark Dabur.The
recent ruling of the Bombay High Court in the Parle case elucidates the distinction between a
house mark and a brand mark. It has considered the distinction between a house mark and
product identification mark.

brief Facts
-
Parle Products Manufacturing Company, a partnership business was set up in1929 by Mr.
Chauhan with his 5 sons, for selling confectionary. In 1939 they expanded their activity to
manufacture and sale of biscuits, and also set up another partnership firm, ParleBottling
Company. In 1950, Parle Products Private Limited was incorporated and all partners became the
first directors. Similarly, in 1952, Parle Bottling Company was converted into aLimited
Company owned by all the brothers. There was division of labour between the brothers wherein
Kantilal and Pitamber looked after the business of biscuits andconfectioneries, i.e. Parle Products
Private Limited (Plaintiff) and Jayantilal looked after the business of beverages, i.e. Parle
Bottling Company Limited. Thereafter, the brothers exitedfrom each others company as per their
division of labour. After few years the descendants of Jayantilal incorporated Parle Agro Private
Limited (Defendant).Both Plaintiff and Defendant continued to use the word Parle as a part of
their corporate nameas well as a trade mark without any objection from the other. The Plaintiff
manufactureconfectionaries, biscuits and similar products and the Defendants manufacture
beverage products. Each has however been naturally using separate names /marks / brands for
each of their products. There is no prior memorandum or agreement signed between the parties
for using the mark Parle.The dispute arose in 2007 when the Defendant expanded and diversified
into the confectionery business. It started manufacturing toffees under the product identification
mark and brandname Mintrox and Buttercup and marketed them with the words Parle or Parle
Confi.The Plaintiff contended that the Defendant cannot use the trademark Parle singly or
inconjunction with its product marks such as Buttercup or Mintrox as it would lead to selling
the product in the name of the Plaintiff. The Plaintiff also raised objection on the ground that
Parlewas a registered trademark to market biscuits and confectioneries manufactured by them.
TheDefendant contended that Parle was registered by the family before division of the
companiesand as such it can be used by members of the family to denote the family lineage for
any business confectionery and biscuits or beverages.

 
The High Court referred a number of cases for arriving at the judgment. Considering the factsof
the case, the Court distinguished between house mark and product identification mark. TheCourt
held that Parle is a mark that belongs to both Plaintiff and Defendant as after the divisionof the
companies belonging to the brothers, the companies continued to use the mark Parlewithout any
objection from the other. The mark Parle is the company identification mark that isused by both
parties. Thus Parle is a house mark that is used by both the companies. It wasfurther held that
each product manufactured by the Plaintiff and the Defendant had a distinct product name, by
which the customer identifies the products. These product names are productidentification marks
that distinguish one product from the other inspite of having the samehouse name. The mark
Parle which is used on all the products of the Plaintiff and theDefendant is their house mark. For
each product a separate mark, e.g. Glucose, Mango-Biteincluding Mintrox and Buttercup etc.
that is given, is the product mark.On the contention of Plaintiff to restrain Defendant from using
the mark Parle Confi on their  products, the Court held that as Parle Confi is not a registered
trademark of the Plaintiff, henceits use by the Defendant cannot per se be forbidden. The product
mark as well as house mark may appear side by side on a product. The Court held that the mark
Parle Confi does notamount to any misrepresentation of the product as a product of the Plaintiff
as it does not createany confusion in the mind of the public who would, at best, think that it is a
product of theParle Group of Companies. A customer while buying a product of Parle shall not
only ask for the house name of Parle but shall specify the product one wants to purchase like
Glucose,Monaco, Mango Bite, and also Buttercup or Mintrox, etc. On the objection of the
Plaintiff thatthe trademark Parle was registered to market biscuits and confectionaries
manufactured bythem, the Court held that there is no prior memorandum between the parties that
bars the use of the word Parle on each others products. In the absence of such memorandum,
either party canuse the word Parle singly or in combination with any other word.In the present
case, as the Defendants have separate product identification marks for each of its products, i.e.
Mintrox and Buttercup, hence it was held that, it shall not create any confusion inthe mind of the
public. The Court held that the Defendants shall not be restrained from usingthe word Parle/Parle
Confi on their products as they have a distinct product identification mark for each product.
However the Court has ordered the Defendant that for selling its products,Mintrox and Buttercup
under the Parle and Parle Confi names, it has to specify in clear font onthe package of Mintrox
and Buttercup that the product belongs to the Jayantilal Group and isnot related to Parle Products
Private Limited.The judgment in this case is one of the first trademark cases in India that has
given, in clear words, the distinction between house mark and product identification mark.
The judgmentcertainly, shall bring more clarity in the concept of house mark in India

 
 ENFORCEMENT OF RIGHTS 

Trademarks must be aggressively protected by the owner to keep them from falling intothe
public domain and the owner losing the protection of the mark. This means that if theowner fails
to protect its mark and allows it to be used in unauthorized ways or in waysthat may cause it to
cease being identified in the mind of the public solely with the goodsand services of the owner,
the protection may be lost. This is because the trademark isbased upon identification of the mark
with a particular source and if the owner of themark shows an indication that it does not care
much about protecting that sourceidentification, the mark may lose its value to that owner and
the court may strip thatowner of the protection the mark originally afforded.Additionally, a mark
may be lost if it becomes "generic." The classic example of the lossof such a mark and its
becoming generic is the word "cellophane." When it was firstcoined, it identified a brand of that
sort of wrapping paper. But it became so widely usedto identify all forms of that wrapping paper
that the courts determined that it hadbecome generic for all such forms and ceased to be a valid
mark. It was no longerassociated in the mind of the public with a particular company making that
paper.Another example might be "Xerox." It is a brand name, a trademark, that is used toidentify
a particular form of photocopying. To refer to making copies as "xeroxing" runsthe risk of
making the mark generic and would likely be aggressively protected.In sum, owners of
trademarks are not necessarily "evil" if they rigorously enforce theirintellectual property. They
must do so if they are to protect their commercial asset. Andwhile, if you are not the owner of such a
mark may object to what you deem to be"restrictive" policies, keep in mind that you too benefit from
the protection afforded bytrademark law. If you want a particular brand of a product or service,
you want to beassured that what you are buying is what you are getting. If the owner of that mark doesnot
protect the mark, at some point you too may be a victim of the confusion that mayresult.When you
contemplate using a name, mark or such, you should strongly consider doing atrademark search
to determine if it is claimed as a mark by someone else. Unfortunately,since not all marks
are registered anywhere, such a search is not conclusive. And atrademark search merely in the
United States may simply not turn up any registrationfor the mark may be registered in another country.

CONCLUSION 
As in all areas of the law and especially when it comes to the vast complexity that is intellectual
property law in general and trademark law in particular, you are bestadvised to seek out an attorney
familiar with these areas before you proceed to either file
a claim to a mark, when you contemplate using a mark belonging to another party orotherwise
when you deal in this area of the law