TRADE MARK

Trademark is a brand entity which has a capability to distinguish your goods and services
from any other person’s goods and services.
Trademark includes word, design, and logo, shape of goods, their packaging and combination
of colours. Trademark is used to indicate a connection between the goods or services and the
person who has a right to use the mark as a proprietor.
Every person in his whole day watch atleast 50 different different trademarks like trademark
of Google, McDonalds, Nike, Tide, Dettol, Microsoft, etc.. It maintains your goodwill in the
market and it is not compulsory to register your trademark so you can use your trademark
without any registration

But the registration of the trademark is compulsory because it protects and promote your
different and creative ideas. So those trademarks that are considered as different by the
trademark department are granted registration only in India.

Trademark has been defined under Section 2(zb) of the Trademarks act, 1999. It is used
on articles of commerce. A trademark in India is registrable for maximum period of 10 years
thereafter you can renew it again. If you get registered your trademark then you are allowed to
take action for its infringement but you are not allowed to take action for infringement for non-
registered trademark.

The Supreme Court in the case of Kaviraj Pandit Durga Dutt Sharma v. Navratna
Pharmaceutical Laboratories held that in an action for infringement of the trademark the
burden would be on the Plaintiff to show that the trade mark used by the defendant in the course
of trade in the goods in respect of which his mark is registered, is deceptively similar.

Concept of Distinctiveness of Trademarks

In this concept we will study about the Distinctiveness of the trademarks because Trademark’s
act, 1999 registered only those trademarks which are distinctive in nature because trademarks
without distinctiveness is considered as a weak trade mark for the trademark registration.

There is one way to obtain distinctiveness of trademark is when the owner of the trademark is
continuously from a very long time using the trademark.

For prevention of such confusion, Section 9(1)(a) of the Trade Marks Act, 1999 prohibits
the registration of the marks which have no distinctive in nature.

An invented mark is easily registrable because they have distinctive in nature. Invented marks
are those marks which you have invented by using your own mind and it is not available in any
dictionary or anywhere else.

An arbitrary (random) mark is also easily registrable because these marks have a meaning in
dictionary before being adopted as trademarks, but these marks are used with those products
or services which are not related to that meaning of dictionary. For example – Apple for
computers and subway (which is being used for restaurants).
 A suggestive mark is also easily registrable. They describe the quality of the products and these
types of marks requires consumer’s perception or imagination about the product.

A geographical name can be registered as a trademark if its distinctiveness is proved.

So, the marks that indicate what the products or services are or marks that are in common use,
generally does not get registrable as trademarks because they are not distinctive in nature.

Important Case Laws with respect to Trademarks

 M/S. ITC Limited vs. Nestle India Limited

The dispute between the plaintiff and the defendant in the present suit arose on account of
adoption of the deceptively similar name “Magical Masala” by the defendant for marketing
purpose of its noodles. But the plaintiff had already introduced its sun feast yippee! Noodles
Magic Masala”. It was submitted that the name “Magic Masala” had become distinctive and
was identified very soon by the public as that of the plaintiff. It was also submitted that due to
great quality and affordable prices, noodles bearing the above name “Magic Masala” earned
huge profits and got extraordinary success. But the defendant introduced its variant “Maggi
xtra-delicious Magical Masala” to gain profit on the goodwill of the plaintiff. After threatened
by the plaintiff, defendant adopted “Magical Masala” but it was submitted that defendant
copied the name “Magic masala by little tweaking it by adding “al” to the word “Magic”.

Plaintiff wants a permanent injunction restraining the defendant, their directors, and servants,
agents from passing off their products noodles by use of the offending mark “Magical Masala”
or any mark similar to plaintiff’s mark “Magic Masala”.

Held – Though the defendant adopted the name “Magical masala” after inspired from the
adoption of the name “Magic Masala” by the plaintiff and from the success of the plaintiff.
There is no passing-off by the defendant so the plaintiff is not entitled to succeed in a passing-
off. As there is no visual similarity between the two wrappers, there is no scope to infer passing-
off from a visual comparison of the two labels. The suit is dismissed. The plaintiff is not entitled
for any of the reliefs as prayed for.

Types of Trademark

There is a general classification of trademarks into four categories according to the description
and nature of the products and services. These four categories are:

 Certification Mark,
 Collective Mark,
 Well Known Mark, and
 Non-Conventional Marks.
Certification Trademark
Certification Trademark is a mark which distinguishes goods or services based on the origin,
material, mode of manufacture, performance of services, quality, accuracy, and other
characteristics.

Section 2(1) (e) of Indian Trade Marks Act defines a certification mark as “a mark capable of
distinguishing the goods or services in connection with which it is used in the course of trade.

EG- WOOLMARK certify that a product is made of 100% is wool, ORGANIC INDIA is a
trademark which satisfies a method or mode of manufacture, ISI mark is given for the products
which have some standards laid by the Bureau of Indian Standards. The trademarks Act 1999
has a detailed provision for types of information that must be included in giving application of
the trademark.

Applicants must submit a certification Trademark application, a statement of case that sets out
the grounds of the application. The application must be filed to the Indian Trademark registry
and they will check whether the application satisfies with the necessary requirements as per the
Indian law. If the registry is satisfied by the requirements given by the applicant, then it will be
published in the trademarks journal.

The application will remain open to opposition by any third party within four months. The
certificate Trademark will be registered if there is no opposition.

The term of registration for a certification Trademark is 10 years. There are provisions to cancel
a certification trademark if an aggrieved party approaches the register, when the proprietor is
no longer competent to the trademark, when the proprietor has failed to observe any provisions
of the regulation given under the law and when the register thinks that there is no advantage to
the public.

Collective marks
Collective marks are trademarks to protect and to differentiate the geographical origin, material
model of manufacture or other common characteristics of goods or services. Collective
Trademark is owned by an association or organisation. It is used by their members to identify
with their level of quality for accuracy.

The importance of collective mark is that certain products are linked to the region, and there
may be historical cultural and social condition which make some products worthy. Just like the
certification mark collective marks cannot be applied by anyone. For example, any gold
jewellery which conforms to all the standards laid by BIS can have the Hallmark on it to show
its level of purity, but only people who are members of CA can use the mark of a CA.

Collective Trade Mark in the Indian context is defined in Section 61 of the Trade Marks
Act, 1999. The members of the collective mark can use the collective mark.

Example of collective mark

The classic example of collective mark is case of “Chirimoya Cumbe”[1].
Well known Trademark
Well known Trademark was introduced during the year of 2017. At present the list has 81
trademarks declared as “well-known” by judicial and quasi-judicial authorities in India.
Anyone can file an application for a well-known trademark for safeguarding and protecting
against passing off an infringement of trademark. Well known Trademark are recognised in
India on the basis of the reputation nationality, internationally and cross-border.

Registrar while determining whether a mark is well-known in a relevant section of public shall
take into account the actual number of consumers, the number of people involved in the channel
of distribution of goods or services and the business circles dealing with the goods or services.

Rule 124 of Trade Mark Rules 2017 permits the trademark owners to file a request for grant
of “well-known” trademark to the Registrar in form TM-M.

Rule 124 ensures a trademark to be granted the tag of “well-known” merely by an application
of request to the Registry. Section 11 (2) of trademarks Act 1999 protects the well-known
trademarks. According to this clause well known trademarks are to be recognised and protected
across all the classes of goods and services. This also means that any identical or similar
product can also be not there.

Section 11 is also giving the conditions required for well-known Trademark registration
and filing of a well-known trademark application. It should be given with the relevant
documents, evidence and a fee of 1 lakh rupees.

EG - In the TATA case the court awarded punitive damages of rupees two laces to the plaintiff
for misusing the well-known trademark.

Non-Conventional Marks
In the modern world trademarks are not limited to words, logos or symbols which can be
graphically represented in relations with any goods or service. Sometimes the sound, taste,
smell, texture, Hologram, motion, shape and ambiance of the goods and service can be treated
as a trademark. As this trademarks are beyond the realms of traditional conventional category
these trademarks are called as non-conventional mark.

Under the rule 26 (5) of Trademark rule 2017 there was a mention of sound trademark.
International organisation like TRIPS still have to make provisions for non-conventional
marks.

Cases dealing with Non-Conventional Trademark

Yahoo Idol has registered the first Sound Mark in India in 2008. India also does not have any
provisions for non conventional marks. There should be amendments in both rules of TRIPS
as well as in the legislation of India because non conventional marks have become such an
important mark in the present modern world.

Examples of smell marks are toothbrush with the smell of strawberry, lubricants for
combustion engines etc. In India no smell mark has been registered till date. There are some
problems with it because it cannot be stored or represented easily. Writing down of the
chemical formula for a smell is the only way to represent it.
GROUNDS FOR REFUSAL OF THE TRADEMARKS

Trade Marks Act, 1999 includes the grounds for the refusal of the trademarks. Section 9 and
11 of the Act provide for the absolute and relative grounds for the refusal of the trademark
registration.

ABSOLUTE GROUND

Section 9 of the Trade Marks Act, 1999 include the Absolute ground.

Trade Marks that do not have any distinguishing characteristics. Distinctive character refers
to trade marks that are capable of differentiating one person’s goods or services from those of
another.

1. Trade Marks that consist only of markings or indications used in commerce to

designate the kind, quality, amount, intended purpose, values, or geographical
origin of products or services delivered.
2. Trade Marks that only comprise markings or indications that have become usual in
the present language or established trade practices.
3. Trade Marks that deceive or confuse the public.
4. Trade Marks that contain anything likely to offend the religious sensibilities of any
class or section of Indian people.
5. Trade Marks containing or including scandalous or indecent material.
6. If the trade mark’s use is forbidden under the Emblems and Names (Prevention of
Improper Use) Act of 1950.
7. Marks are derived from the form of the items themselves and are used as trade
marks.
8. Trade Marks consist of markings on items whose shapes are required to achieve a
technological outcome.
9. Trade Marks are made up of symbols resembling the form that provides products
with their significant value.
The Act makes an exemption for the first three points, namely where the trade marks lack
uniqueness, comprise exclusive marks used in the trade to indicate sort, quality, etc., or
contain marks that have become usual in trade practices.

Similarity test

In conclusion, if one mark appears to be deceptively similar to another, the essential features
of both must be considered. They should not be placed side by side to determine whether
there are any differences in the design and, if so, to prevent one design from being mistaken
for the other. It would suffice if the disputed mark is so similar to the registered mark that a
person normally dealing with one would be duped into accepting the other if it were offered
to him.
In addition to structural, visual, and phonetic similarity or dissimilarity, it is also important to
consider the average human intelligence and imperfect data collection. Thirdly, the question
of his impressions is raised because it is viewed as a whole.

In the case of Mohd. Iqbal v. Mohd. Wasim (2001), it was said that it is common knowledge
that ‘bidis’ are being used by persons belonging to the poorer and illiterate or semi-literate
class. They don’t have a lot of knowledge. They cannot be expected to comprehend and
understand the subtle distinctions between the two labels, which can often be seen when
comparing the two labels. Thus, it was held that the two labels seemed to be misleadingly
similar in light of the aforementioned.

RELATIVE GROUNDS

Section 11 of the Trademark Act clarified the reasons for refusal of trademark registration. The
section contains an exception regarding the grounds for refusal. If the exceptions are met, the
trademark can be registered under this section.

Section 11(1) of the Trademark Act

According to Section 11(1) of the Trade Marks Act of 1999, a trademark is ineligible for
registration if,

1. It resembles the earlier trademark in some ways.

2. It has the same visual appeal as the previous trademark, which covers a specific
category of products and services. This may cause widespread consternation.

Section 11(2) of the Trademark Act

Section 11(2) specifies the following reasons for refusal:

1. Trademarks that are likely to stymie the previously well-known trademark in India
2. A trademark that contains harmful characteristics that may impair the distinctive
character of a similar well-known trademark in India.

Section 11(3) of the Trademark Act

Section 11(3) specifies the following reasons for refusal:

1. The use of the trademark is restricted by the prohibited passing-off law, which protects
the unregistered trademark in the trade.
2. The use of a trademark is prohibited by the Copyright Law.
3. The refusal of registration is not possible for trademarks cited in Sections 11(2) and
11(3) if an objection is raised by the previous trademark owner during the opposition
proceedings.
Case - Amritdhara Pharmacy v Satyadeo

Court established degrees of comparison between sets of similar word marks. ‘Amritdhara’ and
‘Lakshmandhara’ were held similar words. Wherein instead of the words being subjected to a
side-by-side comparison or to a punctilious individual analysis, some structural examination of
the words is permitted, particularly with the object of establishing if either possesses any
outstanding characteristic that will unavoidably cause a more or less lasting imprint on the
hearers’ mind.

Steps To Register a Trademark

To register a trademark, the owner needs to go through the following steps:

 Conducting an exhaustive trademark search;

 Filing an application with necessary documents;
 Examination of the application by the Trademark Registry;
 Post examination procedures;
 Advertisement of the application in the Trademark Journal;
 Opposition by any third party;
 Registration and renewal of the same after every 10 years.


Procedure for registration of trademark:

 Under Section 6 of the Trade Marks Act, 1999, a register, either in papers or digital
form shall keep the records, wholly or partly, of all trademarks with the names, address,
description of the proprietor’s notifications and assignments, except any trust and be
kept at every office premises of the Trade Marks Registry.
 The Registrar shall be liable, under Section 7 to classify the concerned goods and
services in accordance with the international classification of goods and services for the
Trade marks registration. Also, the it would be upon the discretion of the registrar to
decide any question which may arise in deciding the class in which the goods and
services are to fall.

Step 1: Trademark Search

This step is very crucial before filing for trademark registration because conducting a detailed
search will help a trademark owner to know whether their trademark is unique and distinct in
nature and also check whether there is any similar or identical mark already existing or not.
The trademark owner will get to know whether they have any existing competition in the same
trade or not, since, all the existing trademarks are available with the Trademark Registry.
Conducting a search gives a warning that whether the owner will have any risk of using that
trademark or is it safe.

Further under the Chapter III of the Trademark Act, 1999 the procedure is dealt with in multiple
steps The procedures of Registration can be divided into 4 main heads mainly,
1. Application for Registration

2. Advertisement notice for any opposition

3. Amends and Correction

4. Registration.

1. Application for Registration:

Section 18 of the Act , a person or persons who wishes or jointly wish, as the case may be, to
be the proprietor of a trademark used or supposedly used by him, shall apply in a single
application for its registration for different classes of services and goods in the office of the
Trade Marks Registry, which is situated within the territorial limits of principle place of
business of India and the person or the person whose name first mentioned in the case of joint
applicants, has his business in India.

If the Registrar believes that there is a ground for refusal or conditional acceptance of the
application and can be the subject of amendments, modifications, conditions or limitations etc,
then it would depend on valid grounds mentioned by the Registrar.

Further, if the Registrar believes that the application for registration of a trademark has been
accepted under

i) in error or
ii) in the circumstances of the case it should not be accepted or is a matter of limitation,
conditions additional or different from the conditions and limitations of the
accepted application, can withdraw the same application under Section 19

2. Advertisement or Notice in public for opposition:

After the application has been accepted, with conditions and limitations, if any, should be
advertised according to the provisions of Section 20.

If, within 3 succeeding months from the application, any objection arises from the part of any
public the registrar must consider so and ask the aggrieved party to make a counter application
repealing the previous application in the said manner and also permit any correction of any
error as it may follow.

3. Amendment and correction:

The Registrar, if feels fit, at anything, before or after the acceptance of the said application for
registration under section 18 may permit the correction of any error that may follow under the
Section 22.
4. Registration:

Under the Section 23 the applications which

1. are not opposed and time for notice of opposition has expired or,

2. were opposed but the objection was in favour of applicant, will be registered.

According to sub-clause 2, the applicants will be provided with a certificate in the prescribed
form of registration after the trade mark registration. Unless the Registration of trade mark is
completed within 12 months of its application, will be treated as abandoned. Under sub-clause
4, the Registrar is allowed to permit an amendment the register or the certificate for mending
the clerical mistakes.

Case

Superon Schweisstechnik India v. Modi Hitech India Ltd (2018) 250 DLT 308,

The question arises whether trade mark over a abbreviated title can be registered. The plaintiff,
with distinct registered trade mark “Superon” sells goods that of the same as the defendant,
which has very different primary trade mark “GMM”. While the plaintiff used the “VAC PAC”
as an abbreviated form Vacuum Package and claimed to have ownership on the same and
demanded permanent retainment order in the usage of the same.

Under Section 9(1)(a), which purports absolute grounds for refusal of registration and Sec
11(3)(a), of the relative grounds for refusal in addition to law of passing of, the Court
determined that merely abbreviation of words cannot be claimed to have any trade mark
ownership.

In the judgment, the Court also considered Godfrey Phillips India Limited case and came to
the conclusion that the primary trademarks were contrasting in this case and the plaintiff having
no real prospect to succeed, cannot claim the ownership of trademark on the abbreviated word.
 Trademark Infringement and Their Defences in India
Infringement occurs when other person uses a trademark that is same or similar to registered
trademark for the same or similar goods/services. Section 29 of the Indian Trade Marks Act,
1999, talks about various aspect of infringement of registered trademarks.

Grounds of Infringement:
According to Section 29 of the Trade Marks Act, 1999, the followings are the grounds to
trademark infringement in India:
 If the unregistered mark is identical to a mark registered for similar goods and
services.
 The similarity of an unregistered mark with the infringed mark is likely to create
confusion in the minds of consumers.
 The unregistered mark is similar to a registered trademark having a reputation in the
market.
 The registered trademark is used on labelling or packaging without authorization.
 The registered trademark is used in advertising, taking unfair advantage detrimental or
against the reputation of trademark.

Defences against Trademark Infringement:

1. Fair Use:
In order to claim this defense, the accused infringer need to show that he got the
consent of the authorized owner or either proves that he acted without intending to
defraud or mislead the consumers of the goods. "Fair use" has been covered in two
types:

a. Descriptive Fair Use:

Descriptive fair can be taken as a defence where a trademark is used in good
faith for a descriptive purpose and not for a specific mark or goods and
services.

b. Nominative Fair Use:

Nominative fair use can be taken as defence where a mark is listed in
reference to the registered proprietor's goods and services rather than the
goods and services of the user. It is justifiable when the use of the mark is
required to make the goods and services easier to identify.

2. Prior use:
Prior user of the trademark has more rights than the subsequent user even if the
subsequent user has registered the trademark. It can be taken up as a defence by the
 defendant when he is using the mark for a longer period of time than the registered
user and has established reputation in his business.

3. Non-use of the trademark by the Registered Proprietor:

In this situation, the burden is on the defendant to prove that the Registered Proprietor
is not using the trademark for a long time. Further, he needs to show that he has a
legitimate interest in using that trademark which the owner of the trademark is not
using.

4. Delay and Acquiescence:

In situations when there has been a delay in bringing action of the infringement by the
plaintiff, it is stated that the plaintiff's right have been waived off as the trademark
owner and implicitly or explicitly permitted use of its trademark by the subsequent
user.

Remedies of Trademark Infringement:

The proprietor of the Registered Trademark can initiate legal proceedings against the
infringer by stating the unfair business practices. The Indian Trade Marks Act, 1999 provides
for both civil and criminal remedies for trademark infringement against the unauthorized use
of its limitation by the third party.

Civil remedies in form of Injunction: An injunction's role is defined as preventing one

individual from carrying out a specific action or task through the judicial process. In simple
terms, an injunction is a Court order that prohibits a party from taking certain actions such as
continuing sales of an infringing product. An injunction can completely bar the unauthorized
use of the trademark by a party through the judicial process. The Court grants protection to
the owner of trademark through a temporary or permanent injunction.

Civil Remedies In Form Of Damages:

Damages are the monetary compensation for the loss incurred by the trademark owner as a
result of trademark infringement. Under this remedy, the monetary value of a financial loss or
brand impairment is recovered. The court will determine the amount of damages after
examining the owner's actual and prospective losses as a result of the infringement.

Criminal Remedies:
A Criminal Complaint can also be filed against the person infringing the trademark. The
Indian Trade Marks Act, 1999 describes that the registered owner of the trademark has a
chance to file the FIR through police on the infringer and accordingly the infringer can be
punished with the imprisonment for a period not less than six months that may extend to three
years and with a fine of INR 50,000 that may extend to INR 2 lakh.
Case Laws on Trademark Infringement:
Coca Cola Vs. Bisleri International Pvt Limited & Others: The defendant (Bisleri
International Pvt Ltd) by agreement transferred trademark rights of MAAZA to the plaintiff
(Coca-Cola Company) and also gave away the formulation rights, IPR, and know-how along
with the goodwill for India for bottling and selling a mango fruit drink � MAAZA to Coca
Cola.

In 2008, the defendant subsequently filed an application to register trademark "MAAZA" in

Turkey and begin exporting the same fruit drink under name "MAAZA". Coca Cola claimed
a permanent injunction and infringement damages for passing off and trademark since it was
given to them by Bisleri.
The Hon'ble Delhi High Court in this case upheld the injunction against defendant "Bisleri"
for using trademark "MAAZA" and passed an interim order of permanent injunction to
prevent the plaintiff from irreparable loss and injury.

Industria De Diseno Textil Sa Vs Oriental Cuisines Pvt Ltd And Ors, Popularly Known
As Zara Fashion Vs. Zara Food:
In this case, renowned fashion brand ZARA filed a suit for infringement and passing of their
well- known brand ZARA against a restaurant "ZARA TAPAS BAR".

The Delhi High Court ruled out in favour of the renowned fashion brand ZARA, ordered the
restaurant to change its name.

Geographical Indications (GI)

A geographical indication (GI) is used to identify goods having a specific geographical

origin. These indications denote quality, reputation, or other characteristics of such goods
essentially attributable to their geographical origin. Generally, geographical indications are
used for foodstuffs, agricultural products, wine, industrial products and handicrafts. Examples
of GI include Basmati Rice, Darjeeling Tea etc.

Benefits of registration of GI

 Confers legal protection to domestic/national GI which in turn boosts exports.

 Prevents others from making unauthorised use of a Registered Geographical
Indication.
 Promotes the economic well-being of producers of items produced in a specific
geographic area.
Law relating to GI in India: the Geographical Indications of Goods (Registration and
Protection) Act, 1999

The Geographical Indications of Goods (Registration and Protection) Act, 1999 provides for
the registration and better protection of geographical indications relating to goods. The Act
contains provisions relating to the establishment of a Geographical Indications Registry,
registration of geographical indications of goods, rights conferred by registration, registration
of authorised users of registered geographical indications, provisions for renewal,
rectification and restoration of geographical indications, and prohibition of registration of
geographical indication as a trade mark, etc.

Trade Secrets

Trade Secrets are IP rights on confidential information which may be sold or licensed. A
trade secret refers to any confidential business information and may include designs,
drawings, plans, business strategies, R & D related information, etc. In order to qualify as a
trade secret, the information should be commercially valuable i.e. useful in a trade or
business, known to a small number of people, and subject to reasonable steps taken by the
rightful holder of the information to keep it secret.

Types of trade secrets

 Technical information such as information regarding manufacturing processes,

designs, drawings of computer programs, etc.
 Commercial information, such as distribution methods, advertising strategies, etc.
 Financial information, formulas, recipes, secret combination of elements, source
codes, etc.