What is a Trademark?

Trademark is a branch of intellectual property rights. Intellectual property rights

permit people to maintain ownership rights of their innovative product and
creative activity. The intellectual property came to light because of the efforts of
human labour, so it is limited by a number of charges for the registration and
charges for infringement. Types of intellectual property are Trademarks,
Copyright Act, Patent Act, and Designs Act.

A trademark includes a name, word, or sign that differentiates goods from the
goods of other enterprises. Marketing of goods or services by the procedure
becomes much easier with a trademark because recognition of product with the
trademark is assured and easier. The owner can prevent the use of his mark or
sign by another competitor. Trademark is a marketing tool which increases
financing of the business.
A trademark is not always a brand but the brand is always is a trademark.
Sometimes there is a confusion between trademark and brand. The brand name
can be simply a symbol or logo but the trademark is a distinguishing sign or
indicator in a business organization as it has a wider implication than brands.
People are more influenced by the distinctive trademark that reflects the quality
of the product. A trademark can be a logo, picture mark or a slogan.

Trademark law in India

Before 1940 there was no law on trademarks in India. A number of problems of
infringement of registered and unregistered trademark arose which were
resolved under Section 54 of the Specific Relief Act, 1877 and registration was
adjudicated under the Indian Registration Act,1908. To overcome these
difficulties, the Indian Trademark law was enforced in 1940. After the
enforcement of the trademark law, demand for protection of trademarks
increased as there was major growth in trade and commerce.
The Trademark law was replaced with the Trademark and Merchandise Act, 1958.
It provides better protection of trademark and prevents misuse or fraudulent use
of marks on merchandise. The Act provides registration of the trademark so that
the owner of the trademark may get a legal right for its exclusive use.

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 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.

Types of Trademark
Service mark
A service mark is any symbol name, sign, device or word which is intentionally
used in trade to recognize and differentiate the services of one provider from
others. Service marks do not cover material goods but only the allocation of
services. Service marks are used in day to day services :

SSponsorship
Hotel services
Entertainment services
Speed reading instruction
Management and investment
Housing development services
A service mark is expected to play a critical role in promoting and selling a product
or services. A product is indicated by its service mark, and that product’s service
mark is also known as a trademark.

Collective mark
A collective mark is used by employees and a collective group, or by members of a
collaborative association, or the other group or organization to identify the source
of goods or services. A collective mark indicates a mark which is used for goods
and services and for the group of organizations with similar characteristics. The
organization or group uses this mark for more than one person who is acting in a
group organization or legal entity for dividing the different goods or services. Two
types of collective marks for distinguishing with other goods or services of similar
nature:

Collective mark indicates that the marketer, trader or person is a part of the
specified group or organization. Example – CA is a collective trademark which is
used by the Institute of the chartered accountant.
Collective trademark and collective service mark are used to indicate the origin or
source of the product.
A collective trademark is used by the single members of a group of an
organization but is registered as a whole group. Example- CA is the title or mark
which given to the member of Institute of a chartered accountant. That collective
mark may be used by the group of association. This was added to the Trademark
Act, 1988.

Certification mark
A certificate mark is verification or confirmation of matter by providing assurance
that some act has been done or some judicial formality has been complied with. A
certification mark indicates certain qualities of goods or services with which the
mark are used is certified, a certification mark is defined in the Trademark Act,
1999.

Certification trade mark means a mark competent of identifying the goods or

services in connection with which it is used in the manner of trade, which is
certified by the owner of the mark in respect of source, body, mode of
manufacturer of goods or performances of assistance, quality, accuracy or other
characteristics.

Those goods or services which not so certified and registrable as such under this
Act, in respect of those goods or services in the name as the proprietor of the
certification trade mark, of that person. Registration of certification mark is done
according to the Trademark Act, 1999. Requirements for registration is the
product must be competent to certify.

Trade dress
Trade dress is a term that refers to features of the visual appearance of a product
or design of a building or its packaging that denote the source of the product to
customers. It is a form of intellectual property. Trade dress protection is
implemented to protect consumers from packaging or appearance of products
that framed to imitate other products.

Essential of trade dress

Anything that makes an overall look or overall dress and feel of brand in the
market.
The consumer believes that trade dress is the main indicator of differentiation of
one brand or goods from others.
The requirement for the registration of trade dress is the same as the registration
of the logo, mark. The features in trade dress are size, colour, texture, graphics,
design, shape, packaging, and many more

Designation of trademark
Trademark is designated by:

™ (™ is used for an unregistered trademark.it is used to promote or brand goods).

℠ ( used for an unregistered service mark.it is used to promote or brand
services).
R (letter R is surrounded by a circle and used for registered trademark).

Uses of Trademark
Trademark identifies the owner of the product. Under any authorized agreement
of product, a trademark can be used, an example of trademarks goods names are,
iPod and a big mac. Company logos like the Golden Arches at McDonald’s and
McDonald’s “I’m lovin’ it. Brand names like Apple, McDonald’s, and Dolce &
Gabbana.

The usage of the trademark by unauthorized means or illegal means by producing

it in trading is known as trademark piracy. If there is an infringement of
trademark, the owner of the registered trademark can take legal action and for an
unregistered trademark, the only option is passing off. Many countries like the
United States, Canada and many more also, accept the trademark policies, so they
also gave the right to the master of product to take the action for the protection
of their trademark A common concept of a trademark is that the owner of a
registered trademark has a more legal right for protection than the owner of
unregistered trademark.
The concept of usage of the non-physical trademark the Supreme Court held in
the case of Hardie trading Ltd. v. Addison paint and chemicals Ltd. The Supreme
Court gave a wider interpretation on the usage of a trademark that it could be
non-physical and that there were no grounds to restrict the user to use on the
commodities or to the sale of the commodities bearing the trademark.

Owner of the Trademark

Trademark gives protection to the owner by assuring them with the exclusive
rights to use a trademark, to identify the goods or services or permit others to use
it in results of payment. It is a weapon for the registered proprietor to stop the
others from illegal use of the trademark. Under Section 28 the rights conferred by
registration.

The registration of a trademark is valid if the right is given to the certified owner
of the trademark, the owner has the exclusive right to use of the trademark in
respect of goods or services in which the trademark is registered and to claim
maintenance in respect of infringement of the trademark is given to the holder of
the trademark.
Wherever more than two persons are certified proprietors of the trademark
which are same with or nearly identical with each other. The exclusive right to use
of each of those trademarks shall not except if their own rights are related to any
conditions or limitations entered on the register be expected to be taken by one
of those persons as against of other persons only by registration of the
trademark, but each of those persons has the same rights as against other
persons.
Registration of Trademark
Any person claiming to be the owner of the trademark or supposed to used the
trademark by him in future for this he may apply in writing to the appropriate
registrar in a prescribed manner. The application must contain the name of the
goods, mark and services, class of goods and the services in which it falls, name
and address of the applicant and duration of use of the mark. Here the person
means an association of firms, partnership firm, a company, trust, state
government or the central government.

Conditions of registration
The central government by mentioning in the official gazette appoint a person to
be known as the controller, general of patents, designs and trademark who shall
be the registrar of the trademark. The central government may appoint other
officers also if they think that they are appropriate, for the purpose of
discharging, under the superintendence and direction of the registrar, the
registrar may authorize them to discharge.

The registrar has the power to transfer or withdraw the cases by in writing with
reasons mentioned. Under Section 6 of the Act, discussed the maintenance of a
registered trademark. At head office wherein particulars of registered trademarks
and other prescribed, particulars, except notice of the trust, shall be recorded.
The copy of the register is to be kept at each branch office. It gives for the
preservation of records in computer or diskettes or in any other electronic form.

Absolute grounds for refusal of registration

Absolute grounds for the refusal of registration is defined in Section 9 of the Act.
The trademarks which can be lacking any distinctive characteristics or which
consists exclusively of marks or signals, which can be used in trade to indicate the
kind, fine, quantity, supposed grounds, values, geographical origin.

And also a time of production of goods or rendering of the offerings or different

characteristics of the goods or offerings which consists solely of marks or
indications which have come to be average in the present language. That marks
are not entitled to registration. Except it is confirmed that the mark has in fact
acquired a new character as a result of use before the date of application.
It gives that a mark shall not be registered as trademarks if:

It frauds the public or causes confusion.

There is any matter to hurt religious susceptibility.
There is an obscene or scandalous matter.
Its use is prohibited. It provides that if a mark contains exclusively of (a) the
shape of goods which form the nature of goods or, (b) the shape of good which is
needed to obtain a technical result or, (c) the shape of goods which gives
substantial value of goods then it shall not be registered as trademark.
Test of similarity
For the conclusion, if one mark is deceptively similar to another the essential
features of the two are to be considered. They should not be placed side by side
to find out if there are any differences in the design and if they are of such a
character to prevent one design from being mistaken for the other. It would be
enough if the disputed mark has such an overall similarity to the registered mark
as it likely to deceive a person usually dealing with one to accept the other if
offered to him. Apart from the structural, visual, and phonetic similarity or
dissimilarity, the query needs to be viewed from the factor of view of man typical
intelligence and imperfect collection secondly. It’s regarded as an entire thirdly it
is the query of his impressions.

In Mohd. Iqbal v. Mohd. Wasim it was held that “it is common knowledge that
‘bidis’ are being used by persons belonging to the poorer and illiterate or semi-
literate class. Their level of knowledge is not high. It cannot be expected of them
that they would comprehend and understand the fine differences between the
two labels, which may be detected on comparing the two labels are common. In
view of the above, there appears to be a deceptive similarity between the two
labels”.

Relative grounds for refusal of registration

Under Section 11 of the Act, it gives relative grounds for the refusal of registration
of a trademark. A trademark cannot be registered if because of (i) its identity with
an earlier trademark and similarity of goods or services, (ii) its similarity to an
earlier trade mark and the similarity of the goods and there is a probability of
confusion.

It also gives that a trademark cannot be registered which is identical or similar to

an earlier trademark. And also which is to be registered for goods and services
which are not similar to those for which earlier trademark is registered in the
name of a different proprietor if, or to the extent, the earlier trademark is well
known in India. It further gives that a trademark is cannot be registered if, or to
the extent that, its use in India is liable to be prevented by virtue of any law.

Procedure and Duration of registration

The registrar on the application made by the proprietor of the trademark in the
prescribed manner within the given period of time with the adequate payment of
fees. Registration of a trademark shall be of ten years and renewal of the
registered trademark is also for a period of ten years from the date of expiration
of the original registration or of the last renewal of registration.

The registrar shall send the notice before the expiration of last registration in the
prescribed manner to the registered proprietor. The notice mentions the date of
expiration and payment of fees and upon which a renewal of registration may be
obtained if at the expiration of the time given in that behalf those conditions have
not duly complied with the registrar may remove the trademark from the register.

But the registrar shall not remove the trademark from the register if implication
made within the prescribed form and the prescribed rate is paid within six months
from the expiration of the final registration of the trademark and shall renew the
registration of the trademark for an interval of ten years. If the trademark is
removed from the register for non-payment of the prescribed fee, the registrar
shall after six months and within one year from the expiration of the last
registration of the trademark renew the registration,

And also on receipt of implication in the prescribed form and on payment of the
prescribed fee the registrar restores the trademark to the register and renew the
registration of the trademark, for a period of ten years from the expiration of the
last registration.

International registration of a trademark

The law of trademark passed by the Indian government is applicable only within
the territory of India. The trademark which is registered in has effect only in India,
for the protection of trademark in other countries needs to be registered in
another country as well. Each country has its own trademark law with rules and
law for the registration of a trademark in that country. In other words, if an
individual desire to obtain trademark registration in any particular nation then a
separate application must be moved in all such international locations. Within the
year 2013, the Indian government agreed to the Madrid conference which
prescribes a methodology of submitting a worldwide application to the
contracting events from India by means of the workplace of the Registrar of
Trademark. For example- India’s mobile phone manufacturing Micromax received
1.25 millionth international trademark registration for its trademark ‘MICROMAX’
protection in over 110 countries. The international trademark registration for
Micromax filed under the Madrid Protocol, under mark can be protected in many
jurisdictions by only filing an application for international registration. There are
two methods by which an international application can be filed:

International application in each foreign country: For the protection of trademark

in any foreign country, an international application must be filed to the trademark
office by following the rules and regulations of that country. For this purpose the
applicant must hire a firm dealing in trademark registration in foreign, the
applications to countries which is not a party to the Madrid system can be filed as
per above. It provides services that engaging an Attorney in the foreign countries
works closely for registration of a trademark in the foreign country.
The international application under the Madrid system: The trademark
registration may also be initiated by means of filing an international application
under Madrid protocol before the Registrar of Trademark for different nations.
The Indian Trademark office collects international Trademark application and
after finding it in conformity with the Madrid protocol transmits such a global
application to the WIPO (World Intellectual Property Organization), which further
transmits it to the situation overseas. Each and every global software is processed
by way of the overseas nation as per their legislation and all communications are
routed by means of Indian executive.
Effect of Registration
The registration of a trademark shall if valid give the exclusive right to the
registered proprietor to the use of trademarks in respect of goods and services of
which the trademark is registered, and also to obtain relief in respect of the
infringement of the trademark.

Infringement of trademark
A registered trademark is infringed by a person who not being a registered
proprietor or a person using by way of permitted use in the course of trade, a
mark which is identical with or deceptively similar to the trademark in relation to
goods or services in respect of which the trademark is registered. After
infringement, the owner of the trademark can go for civil legal proceedings
against a party who infringes the registered trademark. Basically, Trademark
infringement means the unapproved use of a trademark on regarding products
and benefits in a way that is going to cause confusion, difficult, about the trader
or potentially benefits.

Infringement of trademark on the internet

The expansion of the web is also leading to an expansion of inappropriate
trademark infringement allegations. Probably, a company will assert trademark
infringement each time it views one among its trademarks on an online page of a
Third party. For example, an individual who develops a website online that
discusses her expertise with Microsoft software could use Microsoft’s trademarks
to consult exact merchandise without the worry of infringement. However, she
mainly would no longer be competent to use the marks in this kind of means as to
intent viewers of her internet web page to feel that she is affiliated with Microsoft
or that Microsoft is someway sponsoring her net web page. The honour could
simplest be analyzed upon seeing how the marks are sincerely used on the web
page. In this way, there is an infringement of trademark on the internet.

Case laws on Infringement

Hearst company Vs Dalal avenue verbal exchange Ltd.

The courtroom held that a trademark is infringed when a character in the course
of trade makes use of a mark which is same with or deceptively similar to the
trademark in terms of the goods in respect of which the trademark is registered.
Use of the mark by using such man or woman needs to be in a manner which is
more likely to be taken as getting used as a trademark.

Amritdhara Pharmacy Vs Satya Deo Gupta,

In this case for determining the connection in two words related to an

infringement action was stated by the Supreme Court that there must be taken
two words which are deceptively similar. And judge them by their appearance
and by their sound. There must be considered that the goods to which they are to
be utilised. There must be a consideration of the nature and kind of customer
who would be likely to buy those goods. In fact, it must be considered the
surrounding circumstances and also must consider what is likely to occur if each
of those trademarks is used in common ways as a trademark for the goods of the
particular owners of the marks.
After considering all those circumstances, they came to the conclusion that there
will be confusion. This is to say that, not significantly that one man will be injured
and the other will gain the illegal benefit, but it for that there will be a mess in the
mind of the public which will lead to confusion in the goods then there may be
the refusal of the registration.

No action for an unregistered trademark

This is defined under Section 27 of Act that no infringement will lie with respect to
an unregistered trademark, but recognises the common law rights of the
trademark owner to take action against any person for passing off goods as the
goods of another person as services provided by another person or the remedies
thereof.

Passing off
Passing off is common legislation of tort, which can be used to put in force for
unregistered trademark rights. The regulation of passing off prevents one man or
woman from misrepresenting other items or services. The inspiration for passing
off has faced some changes in the duration of time. In the beginning, it was
restrained to the representation of one person goods to another. Later it was
elevated to business and non- trading activities. Therefore it used to be
additionally accelerated to professions and non-trading movements. Today it is
applied to many types of unfair trading and unfair competitors where the activity
of one person cause damage to another person. The fundamental question on
this tort turns upon whether the defendant’s conduct is such as deceive or
mislead the general public to the confusion between the industry activities of the
two.

In British Diabetic organization V Diabetic, both the parties have been charitable
societies. Their names have been deceptively identical. The phrases ‘association’
and ‘society’ both should be considering that they have been similar in derivation
and meaning and were not completely varied in kind. The everlasting injunction
was granted.

Difference between passing off and infringement

The measures for passing off is different from the measures of an infringement.
The claim for infringement is a lawful remedy whereas the claim for passing off is
a common law remedy. Therefore, in order to establish infringement with respect
to a registered trademark, it is only required to prove that the infringing mark is
same or deceptively similar to the certified mark and no more proof is required. In
the case of a passing off claim, proving that the marks are same or deceptively
similar only is not sufficient.

The use of the mark should be likely to mislead or cause confusion. Moreover, in a
passing off claim it is necessary to verify that the use of the trademark by the
defendant is expected to cause injury or damage to the plaintiff’s goodwill,
whereas, in an infringement suit, the use of the mark by the defendant must not
cause any injury to the plaintiff. But, when a trademark is registered, registration
is given only with respect to a particular category of goods. Protection is,
therefore, provided only to these goods. In a passing off action, the defendant’s
goods must not be the same; it may be different.

In, Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceutical laboratories,
the Apex court held that there are some differences between the trial for passing
off and trial for infringement of a trademark. In American Home Products Corpn.
Vs. Lupin Laboratories Ltd., the Court held that it is well-settled law that when
regarding the infringement of a registered trademark. It is important to carry in
mind the difference between the search for infringement and the search in
passing off the trial. In a passing off action, the courts seem to see whether there
is deception whereas, in infringement matter, it is important to note that the
Trademark Act gives to the owner an exclusive right to the use of the mark which
will be infringed in the case of indistinguishable mark and in the case of related
marks, even though there is deception, infringement can still take place.
In Satyam Infoway Ltd. Vs Sifynet Solutions (P) Ltd. it was held by the Court that
to proceed action for passing off three elements are required to be established,
which are as follows:

In a trial for Passing off, as the expression passing off itself suggests, is to restrict
the defendant from passing off its goods or services to the public which of the
plaintiff’s. It is a claim not only to preserve the status of the plaintiff but also to
protect the public. The defendant must have traded its goods or given its services
in a manner which was deceived or would be likely to deceive the public into
thinking that the defendant’s goods or services are the plaintiffs.
That second element that must be established by the plaintiff is a misconception
by the defendant to the public and what has to be placed in the possibility of
confusion in the minds of the public that the goods or services offered by the
defendant are the goods or the services of the plaintiff. In assessing the possibility
of such confusion the court must allow for the ‘imperfect recollection of a person
or ordinary memory’.
The third element of a passing off action is loss or the possibility of it.
Notwithstanding, trademark registration under the Act only has effect in India. To
get trademark rights and protection in other countries it is required to register the
trademark in those countries. Trademark protection is regional in nature. A single
registration will have to be made in every country where protection is wanted. To
get protection outside India, it is required to file applications in the respect of the
countries individually. In enhancement, there should be registration in a country
before you begin the use of the trademark in that country. In some countries such
as China, Japan, Continental Europe, and Indonesia, the first person who applies
for registration will get the rights of a trademark, rather than the person who first
uses the trademark. Hence, the different party could legitimately take trademark
by applying for registration even if there is the first person using the trademark.

Expanding boundaries of the scope of trademark

Domain name
Every company on the internet has a domain name with a different address in
cyberspace at which the website is located. Nowadays companies have internet
pages as the producer and consumer are far away located as well as every
company is going global. The other purpose is that the Internet has become an
essential tool in marketing. The rule came to be revealed as IP numbers are hard
to remember therefore they came up with the Domain Name System.

A user of the internet will find the domain name very useful in finding the goods
or services that he expected to find. But sometimes a distinct name of a highly
commended business may be allowed and passed off as the original one, For
example, Tata, Google and Maruti. People visit a website or domain name
through a website or a URL. Cybercrime generally means the registration of
another party’s mark as a domain name for the purpose of misuse. A domain
name has to be related to the product given and it has to be different. While
choosing a domain name for a website it is desirable that it should be different. A
high level of distinctiveness is allowed that two domain names could not be alike.
Two types of disputes that occur which concerns with the domain name.

(i) That both the parties have the legal right to forming the words for the domain
name in use. In this way, the court decides that who is the original owner and
who the infringer is.

(ii)The second type is cyber piracy where a party with no legal right questions the
real owner. In this type of problem, there is a number of ways by which a
trademark owner can fight with cyberpiracy.

Smell
It is a non-traditional type of trademark. There is a large problem in registering
this type of trademarks as there is no physical representation. Due to its high level
of distinctiveness, for example, the smell of a perfume strawberry etc., it is
difficult to register this kind of trademark. Smell marks are accepted if they are
represented with a graphical representation. But this provision is only in some
countries. Smell the trademark is protected under copyright. In some instances a
particular scent is also a commodity by itself in other circumstances it is a scent
used or attached to the commodity not the natural smell of the product itself.

Sound
A sound may be trademark and can also be registered. A sound mark is a sound or
a theme with a different identification effect. A well-known sound mark is music
owned by Hemglass. When applying for a sound mark the mark can be expressed
by a sound file or by an accurate description of the sound in notation.

Shape
Distinguishing the one product from another assures that the customer doesn’t
get confused by similar products. The shape of goods registered as a trademark as
long as the shape is not working. A shape is working if it affects the use or
performance of the product. The shape of goods can be a trademark if,

The shape doesn’t superior working.

The shape has become connected with public and manufacturer.
A shape of goods may be registered as a trademark when the shape is not
working. Thus if a certain shape is delicate more than useful in daily life and
serves no purpose then it may be registered.

Conclusion
Intellectual Property reflects the meaning that it’s subject body is the product of
the mind or the intellect. As it’s the product of a productive and creative mind, It
can be traded, purchased, given and reserved. All this can be done but there are
issues related that to be dealt. Trademarks are very important aspects of
Intellectual Property so, the protection of the trademark has become essential in
the present day because, every generator of a good or service will want his mark
to be different, eye-catching and it should be easily distinguishable from others.

Designing a mark like this is difficult and after this when infringing of the mark
takes place it will cause maximum difficulty to the producer. Capital Protection is
very important and there should be a step towards Global Intellectual Property
Order, if there is no IPR protection, it can be explained that inventive activity will
terminate. The reason for Intellectual Property protection is that it can arouse
creativity and discovery and prevent the exploitation of inventions.

Public policy here points at keeping an Intellectual Property system which

promotes innovation through protection initiatives, while at the same time
assuring that this is not at the value of societal interests. In this meaning, the
challenge for the World Intellectual Property Organisation would be to include
public policy effects in applications carried out with developing countries, such as
increasing awareness of flexibilities in existing international intellectual property
treaties.

Intellectual Property is not an unusual concept, in fact, it is a concept which is

discussed in everyday life whether a movie, book, plant variety, food item,
cosmetics, electrical gadgets, software’s etc. It has become a concept of
pervasiveness in everyday life. The World Intellectual Property Day on 26th April
every year